Building Your Brand The 2011 Trademark Survey

Issued: August 01 2011

Australia

Since June 2009, IP Australia has been working towards reforming case management for trademark oppositions, says Michael Wolnizer, a partner at Davies Collison Cave in Melbourne. “The bill contains a number of proposed changes in relation to trademark opposition proceedings and other provisions in the Trade Marks Act (1995) although much of the detail has been left to be included in the Regulations which are yet to be published,” he says. The bill contains significant provisions altering trademark opposition case management, custom seizure provisions, additional damages for trademark offences and extension of privilege to communications of overseas attorneys.

The consultation process began with a paper in June 2009 titled “Resolving Trade Mark Opposition Proceedings Faster,” which was followed by a subsequent paper in November 2009 “Towards a Stronger and More Efficient IP Rights System,” which dealt with trademarks as well as with other forms of IP including copyright, design and patents. In March this year, Wolnizer says, IP Australia released a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, together with an Explanatory Memorandum (EM).

“This will herald significant change in the management of oppositions in Australia,” Wolnizer says. The opposition period has been shortened from three months to two. Other changes pertaining to oppositions include:

 Notice of Opposition. While the exact form of the Notice is to be specified in the Regulations, the intention appears to be that the Notice simply be a form stating opposition to an application which will not contain any detail such as grounds or particulars, says Wolnizer.

 Statement of Grounds and Particulars (SGP). Within one month from the Notice of Opposition, the opponent must lodge a SGP in respect of each ground of opposition. Failure to do so may result in the opposition being dismissed.

 Notice of Intention to Defend. Within one month of service of the SGP, an applicant must file a Notice of Intention to Defend the opposition (similar to a counter-statement in other jurisdictions), says Wolnizer. The EM indicates that there will be no fee associated with this action. Failure to file a Notice will result in the trademark application lapsing.

 Periods for Lodging Evidence. Wolnizer says the opponent will have three months within which to lodge evidencein-support of opposition. “If further time is required then the opponent must seek a direction from the Registrar. Extensions will not be allowed as of right. The same is likely to apply for evidence-in answer.” The period for lodging evidence-in-reply has been reduced from three to two months.

 Suspension. The Bill provides for a six month cooling off period with the consent of the parties, says Wolnizer. This may be extended to 12 months.

Wolnizer also notes that the existing bill also provides trademark owners with the ability to have access to multiple samples of seized goods and to remove such goods for inspection. “There is currently no provision in the Trade Marks Act for this,” he says. “The Bill provides that the designated owner of the seized goods must make a claim for return (which will include proscribed contact information) in order to get the seized goods back. This will stop the importer being able to avoid an action thorough the inability of the trademark owner to contact the importer.”

Lawyers at Griffith Hack say the bill, if enacted, will “improve the fit and function” of the country’s IP system. “If you are opposing a trademark application, you [will] have to provide the grounds of the opposition and the particulars supporting the grounds within a month of filing the Notice of Opposition, [and] an applicant will have to take positive steps if it intends to defend the Opposition,” the firm said.

Other changes include that parties can now bring their trademark disputes before the Australian Federal Magistrates Court, and that penalties for trademark infringement have increased and Australian Courts have discretion to award additional damages for trademark infringement.

Wolnizer told Asia IP that the earliest these changes will be introduced is January 2012, and notes that some of the details may change when the Regulations are released.

Due to recent amendments to the Trade Marks Regulations, the Australian Trade Marks Online Search System (ATMOSS) will now show an “address for correspondence” for international registrations (IR) holders, allowing documents to be served by posting or leaving them at a holder’s foreign address when there is no address for service in Australia available. In most cases, the address will be that of the holder’s representative before the International Bureau of the World Intellectual Property Organization (WIPO). An IP Australia statements says that these amendments will also ensure that the address of the International Bureau no longer incorrectly appears as the Australian address for service in any IR records.

Trademark Prosecution

Tier 1

Allens Arthur Robinson

Blake Dawson

Davies Collison Cave

Phillips Ormonde Fitzpatrick

Spruson & Ferguson

Tier 2

Corrs Chambers Westgarth

FB Rice & Co

Freehills

Griffith Hack

Shelston IP

Trademark Contentious

Tier 1

Allens Arthur Robinson

Blake Dawson

Corrs Chambers Westgarth

Freehills

Mallesons Stephen Jaques

Tier 2

Baker & McKenzie

Clayton Utz

Davies Collison Cave

Griffith Hack

Spruson & Ferguson

The scope of trademark infringement on the internet continues to pose significant challenges for the courts, says Maurice Gonsalves, a partner at Mallesons Stephen Jaques in Sydney, citing the case of Mantra Group v. Tailly (no 2) (2010), in which Mallesons acted for the successful applicant.

“This is the first Australian example of the courts having to grapple with internet advertising and marketing techniques by the use of an offending trademark in a domain name,” he says. “Soon, these principles will be tested in the pending case of REA & Ors v. Real Estate 1 Pty Ltd & Ors, and will test whether a competitor of Australia’s leading real estate portal realestate.com.au is permitted to use the domain name realestate1.com.au.”

Mallesons is representing REA Group, the owner of realestate. com.au, in Federal Court litigation against the owners of realestate1.com.au. The claim against realestate1.com.au is based on trademark infringement, and misleading or deceptive conduct, arising from the use of a domain name and website similar to that of REA Group. “The case turns on new, and increasingly important methods of online marketing such as search engine optimization techniques. With more cases of this type going to trial, courts need to be educated about metatags,

adwords, search engine optimization, etc,” he says.

In addition, Gonsalves says, there are increasing signs that the courts will adopt a stricter approach when it comes to assessing trademark infringement (whether under the Trade Mark Act or under general law rights such as misleading or deceptive conduct and passing off).

“In the 1990s, there were a series of Australian cases providing a generous interpretation of trade indicia which might be regarded as misleading – Red Bull case, Duff Beer case, Paul Hogan cases, for example. Now, it seems that court decisions are retreating to a narrower position. The threshold is becoming higher to establish that a competitor’s appropriation of trade indicia, which might well involve a deliberate attempt to leverage off the goodwill acquired in successful brand identity symbols through the investment of others, amounts to unlawful conduct,” says Gonsalves.

Finally, the Federal Government’s Tobacco Plain Packaging Bill 2011 was introduced into Parliament on July 6, 2011, and has been referred to the House of Representatives’ Standing Committee for Health and Ageing. The draft proposes that all tobacco products will be required to be sold in plain packaging by July 1, 2012, and will restrict the use of trademarks, logos, brand imagery, colours, and promotional text appearing on tobacco packaging, and expand existing graphic health warnings to 75% of the front and 90% of the back of pack facings. This is the first of this type of legislation internationally.

“The Government purports to implement non-binding Guidelines issued under the World Health Organization’s Framework Convention on Tobacco Control, which requires that parties ‘consider’ plain packaging, by using its external affairs, corporations and trade and commerce powers under the Australian Constitution,” says Gonsalves. “In turn, the restrictions on the use of a trademark raises concerns under the TRIPS Agreement, and whether any affected rights holders are entitled to ‘just terms’ compensation for the acquisition of their valuable intellectual property under the Australian Constitution, or alternatively, via international arbitration.”

Key Cases

Perhaps Australia’s most-publicized trademark case over the past two years, EJ Gallo Winery v. Lion Nathan resulted in the High Court ruling that there was relevant ‘use’ of a trademark under the 1995 Australian trademarks act, even though the goods under which the trademark was applied were not ‘projected’ into Australia, but rather made their way onto the market in a small quantity, and only incidentally. “The case was about competing alcoholic beverages, and has also led to the – perhaps surprising – outcome that ‘Radler beer’ and ‘wine’ are to be regarded as ‘goods of the same description’ when assessing trademark infringement,” effectively reversing the long-standing practice of the Trade Marks Office that beer and wine are not similar goods, says Gonsalves. Mallesons Stephen Jaques advised Lion Nathan in the case, while Corrs Chambers Westgarth advised EJ Gallo.

On April 21, 2010, in a judgment in Health World Ltd v. Shin-Sun Australia, the High Court substantially widened the definition of a “person aggrieved,” a threshold test for applications to challenge decisions in various areas of law including registered intellectual property such as trade marks, patents and designs. Health World, the owner of a trademark for Inner Health Plus, applied for cancellation and/or removal of Shin-Sun’s trademark for Healthplus. To succeed in its application, Health World had to establish that it was a person aggrieved; that is, Health World had to demonstrate that it was disadvantaged in a legal or practical sense by Shin-Sun’s trademark remaining on the register.

The High Court, allowing the appeal, considered that the word “aggrieved” should be construed liberally and that there is no exhaustive test for a “person aggrieved.” In particular, the High Court held that it is sufficient but not necessary for the applicant for removal of the mark to show that there is a reasonable possibility of a disadvantage in a legal or practical sense. Gonsalves says that the decision “could mean that trademark registrations (as well as other intellectual property registrations) may be more open to challenge” in the future. Brisbane-based Bennett & Philp advised Health World, while Middletons Lawyers advised Shin-Sun Australia.

Austin Nichols & Co Inc v. Lodestar Anstalt is a 2011 case which is significant because the trademark owner, Lodestar Anstalt, was able to defend the removal of its trademark from the Register of Trade Marks even although Lodestar was not able to provide evidence of use in Australia, by the Registrar exercising her discretion in favour of Lodestar. “Despite the trademark owner’s success in this case, it provides a salient reminder to trademark owners that they should not be complacent, as the discretion to not remove a trademark (where non-use is established) is only exercised in exceptional circumstances,” lawyers at Griffith Hack told Asia IP. “Trademark owners should ensure that their marks are used in Australia or they will be vulnerable to cancellation for non-use.” Mallesons Stephen Jaques advised the appellant, while Bennett & Philp acted for the respondent.

In Sports Warehouse, Inc. v. Fry Consulting, the Federal Court considered the registrability of the words Tennis Warehouse for online retail services featuring tennis clothing, tennis footwear and other tennis gear. The case is significant because of the court’s assessment of the evidence of use tendered by the applicant in support of its claim for registration under Section 41(5) of the Trade Marks Act. That evidence encompassed a wide range of activities on the part of Sports Warehouse, including actual sales to customers in Australia and website use.

“The judge considered that the coupling of the words Tennis Warehouse with the applicant’s TW logo had the effect of substantially diluting any trademark significance relating to the use of the words Tennis Warehouse,” said Wolnizer. “The judge also discounted use of the trademark on invoices on the ground that such use occurred once the purchase of goods had been completed. Because the level of use of the trademark was not sufficient to satisfy the judge that at the lodgement date of the application the trademark distinguished or would distinguish the applicant’s services, registration of the trademark was refused.”

China

China could see improvements to its trademark law in 2011, with the third revision of the law designed to shorten the cycle of trademark registration and rights and to simplify various procedures.

“I’m fully expecting the third revision of the trademark law,” says Pingting Xu, a trademark attorney at Ming & Sure Intellectual Property Law Firm in Beijing. “In 2006, relevant professionals began to prepare for the revisions, and a couple of dozen of conferences have been held. I have read the draft of the third revision and [see many improvements, including] cracking down on the act of infringement.” Xu told Asia IP that she believes applicants and owners of trademarks will be able to better protect their rights should the third revision becomes effective.

Trademark Prosecution

Tier 1

CCPIT Patent & Trademark Law Office

China Sinda

Kangxin IP Counsel

King & Wood

Wan Hui Da Intellectual Property

Tier 2

Beijing Sanyou IP Agency

China Patent Agent (HK)

Liu, Shen & Associates

NTD Patent & Trademark Agency

Unitalen Attorneys at Law

Trademark Contentious

Tier 1

An, Tian, Zhang & Partners

China Patent Agent (HK)

King & Wood

Liu, Shen & Associates

Wan Hui Da Intellectual Property

Tier 2

China Science Patent & Trademark Agents

China Sinda

Fangda Partners

Hylands Law Firm

Zhongzi Law Office

Xu says that rush-registration and infringement are among the biggest challenges facing trademark owners in China today. “In the past few months, I have handled several trademark rushregistration cases, and found that a number of enterprises have not registered their marks in time. And often, when they do want to register their marks, [they have found that] their marks were already registered by other parties.”

She also notes that even though some large enterprises have been working on infringement issues for more than decade, there are still infringing goods in the markets. But fixing the trademark laws alone will not completely resolve the problem of infringing goods. “The prices of goods with IP rights are more expensive for Chinese consumers,” she says.

According to lawyers at Chang Tsi & Partners in Beijing, the State Council’s amendments to the trademark law have been included in this year’s legislative schedule.

Peng Yi, an IP specialist at Anderson and Anderson in Guangzhou, notes that the State Administration for Industry & Commerce (SAIC) is working on an electronic system for trademark related issues, which will include application and protection for international trademarks protected under the Madrid System. The SAIC is also working on the electronic certificate for national trademark agents, says Yi. “This indicates the progress of SAIC’s determination” bringing the country’s IP regime up-to-date.

Yi says that the biggest challenges facing trademark owners in China is that they do not comprehend exactly what is being protected by trademark laws.

“In their understanding, the certificate of trademark is no different [than the] certificate of a house,” he says. “If they have a trademark certificate, [many trademark owners in China believe that] they will win the trademark infringement case with 100% surety.” Yi notes that this situation is getting better thanks to publicity and advertising about trademarks by local Industry & Commerce Departments.

“Normally, purchase notarization is required by courts to recognize an infringing product as evidence, otherwise such evidence would not be admitted,” said Wortham. “However, some infringing products are not available in the market, [such as] products just for export. As a result, it is impossible to get such products notarized and hard to submit such product to serve as evidence.”

International Trademark

Tier 1

Baker & McKenzie

Hogan Lovells

Rouse

Tier 2

Bird & Bird

Deacons

Wilkinson & Grist

Furthermore, Wortham says, sometimes the information about the infringer is not clearly shown on the infringing product. “Unless a trademark owner can produce more detailed evidence, courts are reluctant to recognize the defendant as the infringer under such situation,” he said.

Lawyers at Orrick, Herrington & Sutcliffe in Beijing told Asia IP that trademark owners frequently have difficulty defining the amount of damages they have incurred in cases of trademark infringement. “There are three remedies ruled by the current Trademark Law, but they are not practical and makes difficult for the trademark owners to have reasonable compensation,” the firm said.

Tim Meng, managing partner at GoldenGate Law Firm in Beijing, says that rights-holders in China continue to face the same problem they’ve faced for years: “Infringement is still popular, the price to protect one’s IP right is too high and the cost to infringe another’s IP is not as significant as what it should be,” Meng says.

Ella Cheong, chairman of Ella Cheong (Hong Kong & Beijing), says that the long timeframe of legal proceedings in China is getting better for IP owners. “A trademark application in China used to take two or three years or even longer to mature to registration,” Cheong says. “Currently, the time it takes to register has been shortened to one year or less, which undoubtedly encourage more owners to extend their trademark rights to China.”

Yi, the lawyer at Anderson and Anderson, says he would like to see the government make it more difficult to apply for a trademark by adding a requirement that applicants prove their good faith intention. “For a normal person, the additional requirement [can be satisfied by showing his or her] certificate of business in order to show the good faith of potential use,” Yi says. “This additional requirement means nothing in a practical sense, but it would add some costs and inconvenience for bad faith applicants.”

Key Cases

Yi says that a court in a key trademark infringement case in China recently ruled that the similarity or identity of the mark may not be the dominant factor, sometimes; the good itself may become the key. In this case, the trademark for automobile – “江淮 (jianghuai)” vs “大运 (dayun)” – was at issue. “In China, an automobile is a kind of luxury instrument, therefore, consumers will pay more attention to the good itself, and the difference of marks will much easier to distinguish, even if the two marks are substantively similar,” he said.

In Harley-Davidson v. Chrome Horse, Harley-Davidson, which has opened its first dealership in Beijing, found its business efforts hampered by Chrome Horse, which set up show rooms and service outlets in the Beijing area. Specifically, Chrome Horse, through its agents, committed various infringing acts, including the following using Harley-Davidson registered trademarks on its own products, using Harley Davidson logos in the shops, such as “FOR HARLEY DAVIDSON RIDER” in name cards and signboards, using Harley-Davidson trademarks and logos on their various websites, and falsely representing their business as an authorized Harley-Davidson dealer and as the only Harley-Davidson motorcycle importer in China.

The High People’s Court upheld the initial Intermediate People’s Court ruling that Chrome Horse and the various related parties committed trademark infringements and acts of unfair competition (including false advertisements ) and ordered, among other things, for the respective defendants to stop using “Ha Lei in CC” (Harley in Chinese) as an enterprise name and to cease any false advertisement activities. The initial judgment has also ordered the defendants to pay damages amounting to a total of Rmb165,000 (US$25,500). Harley-Davidson was advised by Baker & McKenzie.

Baker & McKenzie also represented Hasbro International and Hasbro, Inc on their successful ground breaking case against Guangzhou Xingjie Toy Company before the Yuexiu District People’s Court of Guangzhou. Xingjie, one of China’s major toy manufacturers, was found to be engaging in extensive infringement of Hasbro’s trademarks, including the use of Transformax, Optimus Prime and Autobot on Transformers lookalike toys since 2007. Such infringing toys could be found to be on sale all over China, including the major hypermarkets. The court decided that the above acts constitute an infringement of Hasbro’s exclusive trademark rights under Article 52(1) of the Trademark Law and ordered, among other things, for Xingjie to pay damages and costs amounting to Rmb190,000 (US$30,000). The case was the first time Hasbro engage in IP litigation in China. Guangdong Shen Jin Niu Law Firm and Guangdong Tao Sheng Law Firm also advised in the case.

Yi Jianlian v. Fujian Jinjiang Yi Jian Lian Sport Co determined that Yi Jianlian, a National Basketball Association star and a Chinese national basketball team member, is a “highly renowned trademark.” The case, a trademark registration dispute before the Beijing No.1 Intermediate People’s Court, is one of the few cases where the court held that the name of a celebrity can become a highly renowned trademark. The court chose to issue its judgment on April 26, 2010, World Intellectual Property Day, to mark the significance of this matter and broadcast its decision live online. The judgment was affirmed on appeal. Yi Jianlian was advised by Fangda Partners.

Vivien Chan & Co represented Land Rover for the review of their trademark applications for LR1, LR2, LR4 and LR5 on the designated goods of land vehicles, etc., in Class 12. The applications were initially rejected by the Chinese Trade Marks Office on the grounds that the applied for marks will mislead consumers in the origin of the products. Land Rover appealed to the Beijing First Intermediate People’s Court and successfully overturned the Trademark Review and Adjudication Board’s decisions on the grounds that the examinations of trademark administration authorities should follow the law and also the principles of fairness and openness. Many similar marks, such as S40, and XC10 have been approved for registration.

“The trademark administration authorities should strictly adopt consistent examination standards,” said Vivien Chen. “We further argued that there was no evidence to prove that the marks LR1, LR2, LR4 and LR5 are common format of the product model numbers in the automobile industry. The Higher People’s Court upheld the decisions made by the Beijing First Intermediate People’s Court in Land Rover’s favour.”

GoldenGate Law Firm advised French paper manufacturer Arjo Wiggins against a group of local infringers before the Shanghai 2nd Intermediate Court, winning a judgement of Rmb80,000. “Local infringers have tried very hard to avoid punishment,” says managing partner Meng. “One of the tricks is that they set up and use various entities to promote, manufacture and sell infringing products. This case is a good example of how to hold the whole group liable.”

Meng says the case is also a good example of how trademark owners must choose the most suitable cause of action, whether that be trademark infringement, copyright infringement, and/or unfair competition. “Chinese courts are still reluctant to apply two or three causes of actions simultaneously and always treat unfair competition as the last choice,” Meng says.

Hong Kong

In Hong Kong, there had been an increasing number of shadow companies which adopt other entities’ household names and trademarks as company names without authorization, says Kenny Wong, a partner at Mayer Brown JSM, who noted that over the years, his firm alone has represented brand owners in over 350 cases against shadow companies in Hong Kong.

Wong says that in 2010, the Government passed the Companies Amendment Ordinance in response to strong calls from brand owners and intellectual property practitioners. “The chief weapon introduced is the new power of the Companies Registrar to act upon orders by Hong Kong courts to direct a shadow company to change its company name to one not including the prohibited brand name or names,” Wong says. “If the shadow company fails to comply, the Registrar can proceed to replace the objectionable parts of the company name with its registration number.”

The new statutory provisions on shadow companies came into effect on December 10, 2010. Brand owners who have obtained a favourable court order can invoke this new power of the Registrar by submitting a sealed copy of court order and a prescribed form of the Registrar, says Wong.

Wong says that brand owners should be aware of several salient points, including that it will be up to the brand owner to report and provide a sealed copy of the court order to the Registrar. “The Registrar will not actively search for court orders,” he says. A company name replaced under the new power cannot be re-registered by anyone without the Registrar’s consent.

Trademark Prosecution

Tier 1

Baker & McKenzie

Deacons

Hogan Lovells

Mayer Brown JSM

Wilkinson & Grist

Tier 2

Bird & Bird

Ella Cheong (Hong Kong & Beijing)

Marks & Clerk

Robin Bridge & John Liu

Rouse/Yu & Partners

Trademark Contentious

Tier 1

Baker & McKenzie

Bird & Bird

Deacons

Hogan Lovells

Wilkinson & Grist

Tier 2

Freshfields Bruckhaus Deringer

Marks & Clerk

Mayer Brown JSM

Robin Bridge & John Liu

Rouse/Yu & Partners

Protecting intellectual property in Hong Kong may soon become a bit less expensive for IP owners, should a proposed income tax bill be approved.

“Presently, funds used by enterprises for the purchase of intellectual property rights are not tax deductible, unless such capital expenditure was incurred on the purchase of patent rights and rights to ‘know-how,’ as defined in the Inland Revenue Ordinance to mean any industrial information or techniques likely to assist in the manufacture or processing of goods or materials,” says Wong. “The government proposes to change that by providing further types of capital expenditure on intellectual property assets for which profits tax deduction is granted.”

The Inland Revenue (Amendment) (No. 2) Bill 2011 was gazetted on February 25, 2011. Major changes proposed by the Bill include:

 providing tax deductions for capital expenditure incurred on the purchase of a copyright, registered design and registered trademark;

 modifying existing provisions for deductions of capital expenditure incurred on the purchase of patent rights and rights to any know-how; and

 removing the requirement for the “use in Hong Kong” condition.

There are recent signs, Wong says, that Hong Kong’s Trade Marks Registry is relaxing its requirement on registrability. “There have been complaints that Hong Kong is out of step with other jurisdictions and has comparatively high and rigid standard of examination on registrability. This means that foreign trademark owners, which have successfully registered the same marks in other major comparable jurisdictions such as the UK, Australia, Singapore and under the Community Trademark System, may find their mark being refused registration in Hong Kong.”

Finally, Wong notes that applicants from China continue to attempt to register in Hong Kong marks that strongly resemble marks of overseas proprietors, sometimes in unrelated classes. “Trademark owners and their agents need to be on constant lookout and spend money opposing or invalidating such applications to prevent dilution of their marks,” Wong says.

Key Cases

Baker & McKenzie advised LVMH Group worked to enforce in Hong Kong a judgment in the United States for US$3.5 million against a sophisticated syndicate which was involved in massscale counterfeiting activities throughout the world. A lawsuit was commenced in Hong Kong to enforce the US judgment as there are several properties in Hong Kong held by the US defendant and various nominees. A Mareva injunction was obtained to freeze the several properties and bank accounts of the US defendant and various nominees. Final judgment for US$3.5 million was also obtained in Hong Kong. This case involves many different legal issues and 10 defendants; five of the defendants are in the US and five of them are in Hong Kong. There were numerous documents and issues involving nominee companies to unravel before judgment could be obtained.

Baker & McKenzie has also been involved in ongoing investigation and civil litigation on behalf of Nokia against counterfeit mobile phone and mobile accessories traders located in Chung King Mansion, a building in Tsim Sha Tsui, Kowloon, noted for its cheap guesthouses, curry restaurants, clothing shops and foreign exchange offices. The phone traders located in Chung King Mansion are responsible for distributing a high percentage of all phones used in Africa, Latin America and the Middle East. The majority of these phones are either counterfeit phones or look-alike phones of Nokia products.

“This is the first time a mobile phone company has launched large-scale blanket legal action against the numerous phone traders in Chung King Mansion for trading in counterfeit and/or infringing mobile phones,” a firm spokesperson told Asia IP. “Legal actions included investigation, High Court proceedings, and personal service of High Court Writs of Summons, negotiations and settlements,” all under Hong Kong law.

In a hearing before the the Hong Kong Registrar of Trade Marks, Italian shoemaker Geox’s application for trademark registration of a design of a shoe with a cloud of air spurting out from the sole was refused on the ground of lack of distinctiveness. “A shoe with a cloud of air spurting out from the sole appears to be a fanciful mark in the eyes of most, but the Registrar views that when the mark is used on footwear, it merely shows that air can pass through the sole so the shoe allows high permeability of air, hence it designates the characteristics of the goods,” Mayer Brown JSM’s Wong told Asia IP.

“The case also illustrates that any evidence of use to support a claim that a particular mark has acquired a distinctive character must be use of the mark as it is exactly applied for registration, as Geox has relied on different versions of breathing shoe designs in the evidence seeking to register any representation of a shoe, and not a particular shoe, with steam emanating from its sole.”

India

India’s Trade Marks Registry has introduced the capability for free online public searches of its website and has done away with the issuing of Official Public Search Reports and Expedited Official Public Search Reports, says Priyanki Sah, an associate at Mumbai-based Wadia Ghandy & Co. “Despite this being quite convenient, easily accessible and fast, the free online search is not an official or an accurate search,” says Sah. “The procedures of online filing and online examination – apart from the digitization of all trademark files at the various trademark offices – have tremendously helped in speeding up the process and making it less cumbersome. Yet, the parallel system of manual trademark filing is a hindrance to the present system and prevents the system from being an entirely effective system since mistakes in manual data entry in the Trade Marks database persist.”

“This facility of a public search has greatly simplified the procedure for conducting a search while ensuring transparency,” says Ashutosh Kane, a partner at WS Kane & Co in Mumbai.

Sushant Singh, an advocate at Sushant M Singh & Associates in New Delhi, says that trademark owners continue to face challenges doing business in India. “There are problems relating to establishing jurisdiction in the civil court when it comes to foreign plaintiffs and foreign defendants,” says Singh. “Although the courts were [previously] lenient in assuming jurisdiction, now the courts are following stringent tests in determining the cause of action in relation to adjudging the jurisdictional aspect.”

However, Singh says this position is now changing, and trademark owners are themselves realizing the importance of approaching the competent court of jurisdiction where the cases are actually to be filed, and the problem of jurisdiction due to the awareness of trademark owners is improving.

Trademark Prosecution

Tier 1

Anand & Anand

De Penning & De Penning

DP Ahuja & Co

Lall Lahiri & Salhotra

Remfry & Sagar

Tier 2

Intll Advocare

K & S Partners

Krishna & Saurastri

Lall & Sethi

Saikrishna & Associates

Trademark Contentious

Tier 1

Anand & Anand

Lall & Sethi

Lall Lahiri & Salhotra

Remfry & Sagar

Singh & Singh

Tier 2

De Penning & De Penning

Inttl Advocare

K & S Partners

Krishna & Saurastri

Saikrishna & Associates

Singh says courts are also becoming more serious about proceeding with trials by calling upon the parties to depose as a witness. “This has created a kind of complication in the eyes of trademark owners who are just concerned with relief of injunction and are not interested in pursuing the matters,” Singh says. “However, again spreading of awareness and importance of trial are also persuading the trademark owners to go for lengthy trials and not merely confining their belief only on interim injunction.”

The Supreme Court has, in a recent judgment, mentioned that ex parte injunctions should be given very conservatively, notes Gunjan Paharia, managing partner at New Delhi-based ZeusIP. “This is likely to have a great impact on trademark cases, where 60% of the cases would be settled only because the plaintiff had an injunction against the other party.”

IP practitioners in India expect the country to implement the Madrid Protocol in the near future, which should be beneficial to applicants, says says Sandhya Singh, a senior associate at Anand and Anand in New Delhi. “Applicants will no longer be required to file a separate trademark application in India in order to secure statutory rights in a trademark,” says Singh. “Like PCT applications, an applicant may simply file a trademark application in any Madrid Protocol member country and choose India as one of the countries in which it wishes to seek trademark registration. This should be beneficial to applicants since costs and time would be saved.”

Sunil B Krishna, a partner at Krishna & Saurastri Associates in Mumbai, says that a key area in which Indian IP owners continue to fall short is securing registrations for their trademarks in overseas markets.

“A large number of companies and corporate houses fail to register their brands and trademarks on foreign soil,” says Krishna. “This emanates from a lack of awareness and knowledge of IP issues, failure to appreciate the value of their intellectual assets and a mind-set for cost cutting. [Many of them have never taken] appropriate steps to ensure protection of their brands.”

However, Krishna says, this situation is finally changing. “Company managers, judges and enforcement officers alike are increasingly well-educated and aware about IP issues,” he says. “Further, with India set to adopt and implement the Madrid Protocol, it will revolutionize the trademark filing system for domestic applicants, providing a simple, cost-effective application allowing registration gateways in all the member nations as the applicant desires.”

IP owners continue to struggle with delays in processing trademark applications and completion of opposition procedures. Further, says Ranjan Negi, a partner at Amarchand & Mangaldas & Suresh A Shroff & Co in New Delhi, for quite some time now, no hearings have been scheduled either in respect of trademark applications or oppositions, leading to delays in registration of marks. “This challenge seems to be worsening on account of a backlog of matters even as hundreds of new applications are filed everyday at the Trade Marks Registry,” says Negi.

Key Cases

Anand and Anand advised Toyota in Delhi High Court in the ongoing Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal & Others, which can be touted as a major victory for the Japanese automobile company.

“Toyota had filed an infringement and passing off action against Prius Auto Industries, a Delhi-based auto manufacturing concern, to protect its trademarks such as Toyota, Innova and Prius,” says Sandhya Singh. An ex parte interim injunction was granted in favour of Toyota, which was subsequently set aside in March 2010.

“Toyota had appealed against the order setting aside the ex parte injunction. The Appellate Bench took cognizance of the infringing use of Toyota’s marks by the respondents and directed them to alter their existing manner of use of the same on their product packaging, catalogue and advertisements,” says Singh.

The respondents were directed to write the sentence “vehicle and marks used for item identification only” in a conspicuous and consistent font as has been used for the other descriptive matter on their product packaging. The respondents were also directed to not write “Genuine Accessories” on their products without it being accompanied by “Of Prius Auto Industries.” The Court restrained the respondents from using the Toyota Logo and ordered them to maintain accounts for sales of products under the Prius trademark with the Court every six months.

DH Law Associates has advised Hindalco, the flagship company of the Aditya Birla Group and one of the largest aluminum foil manufacturers in the world, obtaining an ex parte injunction restraining a local manufacturer from infringing Hindalco’s trademark Freshwrap and copyright in respect of artistic works. The injunction also restrains the local manufacturer from passing off of their product Fresshpack as that of Hindalco’s by using similar trademarks and labels and trade dress, says Sidhartha Srivastava, a partner at the Mumbai-based firm.

In Larsen & Toubro v. Leuci Communications and Ors, for infringement of trademark by using the Plaintiff’s registered L&T logo and trademark in respect of chargers and its carton, the Delhi High Court was of the opinion that the Defendants had clearly copied the Plaintiff’s registered trademark and had no right to use the mark, establishing the Defendant’s intention to pass off their products as those of the Plaintiff. A significant issue considered by the Court was how an order in the captioned matter would be executed as against Defendants based in a foreign company, situated outside the jurisdiction of this Court.

Sah, the Wadia Ghandy lawyer, notes that this is the first case where the attention of the court was drawn to the Intellectual Property Rights (Imported Goods) Rules, 2007, under which the Plaintiff’s company may provide a notice to the Commissioner of Customs (or any other Customs Officer) informing him of infringement of its rights, with a request to suspend the clearance of the imported counterfeit goods.

“It was observed that this will help in preventing import and sale of these infringing goods in India,” says Sah. “The court restrained the Defendant from manufacturing, selling, exporting, distributing, or marketing any mobile charger using the Plaintiff’s logo or trade mark on the product or on its packing and awarded punitive damages of Rs50,000 (US$1,100) in order to protect the rights of the Plaintiff.”

A.T.V. Venugopal v. Ushodaya Enterprises involves an important question of law when it comes to trademark infringement where the Supreme Court of India has decided and laid down a test relating to fraudulent infringement and dishonesty, says Sushant Singh’s Singh. “The Court has summarized the entire law on the subject relating to trademark infringement, which has been a matter of judicial opinion for the last more than two decades and thereafter culled out the following relevant tests pertaining to infringement and dilution of the trademark by use of the trademark,” says Singh.

 The respondent company’s trademark Eenadu has extraordinary goodwill and reputation in the State of Andhra Pradesh, and therefore the use of the mark Eenadu is extremely well-known and is a household word in Andhra Pradesh. The mark may be a descriptive one, but it has also acquired secondary significance in Andhra Pradesh, and therefore the appellant’s use of the Eenadu trademark is causing dilution of the respondent’s well-known trademark.

 Additionally, the Court said that because the adoption of the word Eenadu by the appellant is ex facie fraudulent and mala fide from the very inception, permitting the appellant to carry on his business under the said trademark would be in fact to put the seal of approval of the Court on the dishonest, illegal and clandestine acts of the appellant, and that permitting honest and fair play ought to be the basis of the policies in the world of trade and business.

“These tests are relevant for the purposes of fraudulent trademark infringement and also reiterate and paraphrase the historic law laid down by the English Courts and Indian Courts honest and fair play is the crux of the matter,” says Singh. “The law is that no one can be permitted to encroach upon the goodwill and reputation of the other.”

In Times Publishing House Limited & Anr v. Registrar of Newspapers for India & Ors in the High Court of Karnataka at Bangalore, the petitioners, Times Publishing House, questioned the previous orders issued by the Registrar of Newspapers for India, and also for a writ of mandamus to respondent not to verify, approve, authenticate or register the titles Financial Times Facsimile and/or FT Weekend Facsimile. When the matter was taken up, an application was moved by the respondents seeking dismissal of the writ petition for want of territorial jurisdiction. The said application was opposed by the petitioners on the ground that the entire matter could be heard in its entirety instead of adjudicating on the application moved. The court took up the matter to determine whether it has territorial jurisdiction to resolve the dispute between the petitioners and the respondents.

The petitioner had applied for the newspaper title Financial Times in English language in Bangalore and was granted the said newspaper title by the Registrar of Newspapers for India (RNI). The Times Publishing House (TPH) had started publishing the newspaper in English from Bangalore. Later, Financial Times Ltd of the United Kingdom filed a suit against the TPH before City Civil Court at Bangalore on the ground that it has a registered trademark. An ex parte order of temporary injunction was granted by the trial court, and the same was questioned by the petitioners. The TPH was also granted the second newspaper title Financial Times by the RNI and it started publishing the said newspaper in English from Delhi. A temporary injunction was granted in favour of respondent by the City Civil Court, restraining the petitioner from publishing the newspaper with the same title.

The court ultimately held that just because Financial Times was being published from Bangalore, it did not confer territorial jurisdiction except that the end use is in Karnataka. It was reiterated that the bundle of facts which constitute a cause of action for the Court to exercise jurisdiction were wanting and not forthcoming in the petition itself. The Court held that the end result of the cause of action did not confer jurisdiction, inasmuch as it was not a cause of action by itself. The Court dismissed the petition on the ground of lack of territorial jurisdiction.

Vikrant Rana, a partner at SS Rana & Co in New Delhi, told Asia IP that the decision was significant in determining the territorial jurisdiction of the case and curtailing the practice of forum shopping.

In July 2010, the TATA Group, one of India’s best-known companies, sued Greenpeace for trademark infringement (via tarnishment) after Greenpeace’s website featured a satirical game using TATA’s trade marks. The game was meant to highlight the plight of olive ridley turtles, allegedly being harmed by one of TATA’s factories.

“Initially, Justice Ravindra Bhat of the Delhi High Court suggested (but did not pass any direction) that Greenpeace should stop using the trademarks,” says Pooja Dodd of boutique firm IP Gurus in New Delhi. Greenpeace heeded the suggestion. However, in January 2011, the Judge liberally interpreted the right to freedom of speech and held that Greenpeace was within its rights to use the trademarks.

“The case is significant because it is a victory for free speech, but also risks encouraging ‘brandhackers’ and others seeking to use trademarks in unflattering contexts,” says Dodd.

Indonesia

The Central Jakarta Commercial Court declared a lawsuit filed by Gado, a well-known fashion company from Milan, against a local businessman regarding a dispute over the Dolce & Gabbana trademark unacceptable.

“In its legal considerations, the judges argued that the Central Jakarta Commercial Court was not authorized to investigate and prosecute the dispute between Gado against the defendant, Chandra Juwito,” says Myriasandra. The judges argued that the court which has the authority to investigate and prosecute this case is the Surabaya Commercial Court, since Chandra Juwito is domiciled in Surabaya.

Trademark Prosecution

Tier 1

Amroos & Partners

Biro Oktroi Roosseno

Hadiputranto Hadinoto & Partners

Rouse/Suryomurcito & Co

Soemadipradja & Taher

Tier 2

Acemark

AFFA Intellectual Property Rights

Am Badar & Partners

George Widjojo & Partners

Pacific Patent

Trademark Contentious

Tier 1

Amroos & Partners

Hadiputranto Hadinoto & Partners

Lubis Santosa & Maulana

Rouse/Suryomurcito & Co

Soemadipradja & Taher

Tier 2

Biro Oktroi Roosseno

George Widjojo & Partners

Int-Tra-Patent Bureau

Pacific Patent

Winata & Gautama

“Gado will file a cassation since the judges did not consider the legislation provisions carefully, where if either party is domiciled abroad, a lawsuit should be filed to the Central Jakarta Commercial Court,” Myriasandra says.

Jasper Conran v. Franky Prayogo is a continuation of a criminal case that was adjourned in 2009. In 2009, Jasper Conran filed a cancellation lawsuit (a civil case) against the trademark Conran, owned by Franky Prayogo, a local businessman. The cancellation suit was rejected by the Commercial Court Judges, and both trademarks were allowed to be registered. Prayogo filed a police complaint while the cancellation suit is still ongoing. Even after the Commercial Court Decision’s became final and legally binding, Prayogo did not stop pursuing the criminal case. In December 2010, the Police issued a letter of termination of the investigation of this case based on lack of evidence. Jasper Conran was advised by Biro Oktroi Roosseno, while Franky Prayogo represented himself.

Additionally, French fashion handbag designer Longchamp filed an opposition regarding a Horse Riding Device trademark owned by local Indonesian businessman when they discovered, in the Trademark Official Gazette, that the local company was applying the trademark which is similar with their Longchamp and device trademark. The French company claimed that the applicant device is very similar (without a word mark).

Japan

Trademark Prosecution

Tier 1

Abe, Wada & Watanabe

Matsubara, Muraki & Associates

Nakamura & Partners

TMI Associates

Yuasa and Hara

Tier 2

Abe, Ikubo & Katayama

Asamura Patent Office

Kyowa Patent and Law Office

Seiwa Patent & Law

Suzuye & Suzuye

Trademark Contentious

Tier 1

Anderson Mori & Tomotsune

Mori Hamada & Matsumoto

Nakamura & Partners

TMI Associates

Yuasa and Hara

Tier 2

Abe, Ikubo & Katayama

Abe, Wada & Watanabe

Hibiya Park Law Offices

Kyowa Patent and Law Office

Nishimura & Asahi

Amendments to Japan’s Trademark Actwere promulgated on June 8, 2011, and are scheduled to come into force on a date to be specified by ordinance within one year. The amendments to the Trademark Act aim to promote the timely granting of trademark rights, say lawyers at Baker & McKenzie in Tokyo, who note that following changes are expected:

 Filing of an invalidation action against a trademark (which was subject to an infringement action after a court decision of the infringement action is rendered) will be restricted.

 The decision of an invalidation action will no longer bind third parties. This means that any third party may bring an invalidation action against a trademark even after an invalidation action is brought by another party and a decision is rendered, the firm noted.

 The prohibition against the new registration of a trademark, within one year from the extinguishment of a similar trademark, is abolished.

“It is expected that the Trademark Act will be amended to expand the scope of trademark protection to cover sound, movie, location, hologram and colour marks,” the Baker & McKenzie lawyers say. “The Working Groups of the Japan Patent Officehave been discussing how they will accept applications to register them as trademarks. However, the details of the new system and the timing of the amendment have yet to be decided.”

Many Japanese companies are concerned by applications and registrations of trademarks and domain names for names that are exactly the same as those owned by Japanese companies by totally unrelated parties in China, the Baker & McKenzie lawyers told Asia IP. “Recently, the Chinese Trademark Office rejected a trademark application for a name of noodle which is commonly used in Japan, based on an opposition by a prefecture of Japan for the reason that such a trademark is likely to cause confusion with the Japanese product itself.”

In many cases, the trademark owner has not been aware of such applications and registrations in China. “If their own trademarks are registered by totally unrelated parties in China, Japanese companies cannot use their own trademarks in the Chinese market and sometimes also cannot export OEM products bearing their own marks from China,” the firm said.

Tadao Takashiba, a patent attorney and vice president of Shiga International Patent Office in Tokyo, says the Japan Patent Office is planning to revise the guidelines for similarity dissimilarity of goods and services in the near future, though the details have not yet been determined. “Trademark owners may have to change their trademark strategies,” Takashiba says.

It remains difficult to prove how well-known a trademark is, and to prove the acquisition of distinctiveness of a trademark through the use thereof, says Takenori Hiroe, chairman and director of Hiroe & Associates in Gifu city, in Japan’s Chūbu region. Hiroe also says that he would prefer Japan introduce a consent system for trademark examination. “Japan has adopted the substantive examination system, so it is difficult to approve the coexisting registrations of an identical or similar trademark with only the mutual consent of the related parties,” he says.

Key Cases

Tokyo-based Nishimura & Asahi advised Sumitomo Asset Management in a trademark invalidation trial case, where 3M brought an invalidation trial before the Japan Patent Office against the registered trademark Haito Monogatari 3M because it was confusingly similar to 3M trademarks. Nishimura & Asahi won the case, one of several brought to invalidate 3M-related trademarks in Japan, in December 2010. No appeal was made to the Intellectual Property High Court.

In August 2010, the Tokyo District Court held that the owner of an internet shopping website was not liable for trademark infringement despite third party companies displaying or selling bags, bibs and cell phone accessories bearing the plaintiff’s registered mark, Chupa Chups, or similar marks thereto. The Court ruled that the owner of the internet shopping website was just providing online space for an internet shop, and that sales agreements were concluded between the sellers and consumers.

“This is the first and only case in which a Japanese court rendered judgment regarding the issue of liability of the owner of an internet shopping website in the context of trademark infringement,” say lawyers at Baker & McKenzie. The defendant was Rakuten, owner of the largest internet shopping and internet auction website in Japan.

In November 2010, the Intellectual Property High Court rendered a decision in connection with the ability to register a bottle design of the beverage Yakult as a three-dimensional trademark. The IP High Court ruled that the bottle design had become famous in Japan and therefore could be registered as a three-dimensional trademark without any indication of trademark on the bottle, reversing the Japan Patent Office’s decision that rejected the trademark application. The Court recognized the secondary meaning of the bottle design itself per se, not bearing any word mark. This was the second case for a bottle design to be granted registration without any indication of a logo on the bottle, following the Coca-Cola bottle design.

In August 2010, the Intellectual Property High Court held that the use of registered trademarks in a transaction between the plaintiff’s parent company and the parent company’s Japanese distributor constitutes genuine trademark use as defense against a cancellation claim based on non-use. This reversed the Japan Patent Office’s decision that such use does not constitute the genuine use as defense to the cancellation claim based on nonuse. “In the first instance, the Japan Patent Office recognized that since no clear license agreement existed between the plaintiff and the Japanese company, the use of a registered mark by the latter does not constitute genuine use as defense to cancellation action based on non-use, even though there was an existing license agreement between the parent and Japanese company,” said lawyers at Baker & McKenzie.

The High Court, however, ruled that it is reasonable to recognize the existence of verbal or implied license agreements between the plaintiff and Japanese distributor in view of the following facts:

 the plaintiff is a wholly owned subsidiary of the parent company;

 the headquarter location of both the plaintiff and parent companies is identical; and

 the plaintiff has been holding trademarks and other IP rights on behalf of the parent company and its’ subsidiaries.

Thus, the Baker & McKenzie lawyers say, the High Court ruled that the use of the registered mark by the Japanese company should be treated the same as it would be by the plaintiff’s licensee.

The court made it clear that parody trademarks are not illegal in Japan when a trademark registration for “Shi-sa” and a jumping cat device was registered for goods in Class 25 by a resident of Okinawa. Athletics gear maker Puma filed an opposition on the basis of the well-known Puma trademark for a number of reasons, including similarity and the fact that the “Shi-sa” device was liable to cause confusion regarding the origin of goods. The courts found that there was no legal notion of parody in the Japanese Trademark Law, and that the “Jumping Shi-sa” mark could not be considered a parody or to have taken a free ride on the goodwill of the Puma trademark.

South Korea

On January 1, 2011, the Korean Intellectual Property Office (KIPO) amended its Trademark Examination Guideline to reflect the Court’s recent ruling on the standard of review in determining the similarity of composite marks. “Prior to the amendment, similarity between a mark under review and the referenced mark was determined by reviewing each component of the respective mark separately,” says Jae Hoon Kim, managing partner and head of the IP group at Lee & Ko in Seoul. “However, the amendment now takes the general approach of reviewing the marks in their entirety, as a whole, in determining similarity between them, and each component of composite marks are reviewed separately only when separating each component seems natural to do so in light of the trade practices.”

In April 2010, the law granting power and authority to KIPO to enforce counterfeits was ratified; accordingly, says Kim, KIPO officials are now authorized to investigate and enforce trademark infringement cases.

Ho-Hyun Nahm, a patent and trademark attorney at Barun IP & Law, says the Singapore Treaty on the Law of Trademark will soon be reflected in the Korean Trademark Act. “Pursuant to the Singapore Treaty, the Korean Trademark Act will make it possible for a trademark applicant to continue the application process even after the expiration of term regarding the cases of amendment of procedures regarding the trademark application (confirmation of application date, etc.) under Article 9-2 of the Korean Trademark Act, and in submitting arguments against the notice of preliminary rejection,” says Nahm. “In these cases, even after the expiration of term, if a request is made within two months, the procedure can be continued with the completion of insufficiency.”

Nahm also notes two other changes in KIPO procedure: trademark registration fees can now be paid in two instalments, reducing the burden on trademark owners, and owners of registered trademarks can now renew their registration simply by filing renewal applications and paying the renewal fees.

On March 7, 2010, the Korean Fair Trade Commission(KFTC) approved a Guideline on Examination of Unfair Exercise of Intellectual Property, which wholly amended the previous version. It came into force on April 7, 2010. “The KFTC has plans to investigate industries which pose serious risks of IP abuse, including the IT industry and the pharmaceutical industry,” says Young-Hill Liew, partner and head of the IP group at Yulchon Attorneys at Law.

Trademark Prosecution

Tier 1

Cho & Partners

Kim & Chang

Lee & Ko

Lee International IP & Law Group

You Me Patent & Law Firm

Tier 2

Bae, Kim & Lee

Central International Law Firm

Nam & Nam World Patent & Law Firm

Yoon & Yang

YP Lee, Mock & Partners

Trademark Contentious

Tier 1

Bae, Kim & Lee

Cho & Partners

Kim & Chang

Lee & Ko

Yoon & Yang

Tier 2

Central International Law Firm

Darae Law and IP Firm

Lee International IP & Law Group

You Me Patent & Law Firm

YP Lee, Mock & Partners

IP owners continue to struggle to protect their intellectual property from counterfeits. Kim says that while the authorities are very proactive in cracking down, the importation of counterfeits from China is still a big problem in Korea.

Key Cases

Korea has seen part of the extended, multi-jurisdictional battle over the rights to the alligator device mark of Lacoste, used internationally on sportswear. Lacoste, whose alligator faces right, filed a trademark invalidation suit against Crocodile International’s device mark which is a crocodile facing left. Lacoste also filed a trademark cancellation action against Crocodile International’s combination mark (the term “Crocodile” plus the crocodile device facing left), alleging that the licensees of Crocodile International misused or abused Crocodile International’s marks causing confusion to the consumers.

After intense dispute, the Supreme Court finally ruled in favour of Lacoste in the invalidation trial. Crocodile International’s trademark registration is expected to be invalidated.

With regard to the cancellation trial, the Supreme Court also ruled in favour of Lacoste and remanded the case. The Patent Court, on remand, ruled in favour of Lacoste, Crocodile International appealed, and the Supreme Court finally ruled in favour of Lacoste. Crocodile International’s trademark registration is expected to be cancelled in the near future.

“This is a part of multijurisdictional battle over the rights to a crocodile device mark,” says Kim of Lee & Ko. “Had Lacoste lost, then Crocodile International’s infringing mark would co-exist in the market, causing greater damages to Lacoste, not to mention the consumers’ on-going confusion between their respective marks.”

In addition, says Kim, the outcome of the battle in Korea is expected to have a significant impact on related litigations pending in other jurisdictions. This was the first case in Korea where the courts ruled on the “likelihood of confusion” element while reviewing cancellation for misuse or abuse of a registered trademark by licensees of a trademark owner.

Adidas, owner of the Adidas sports brand, and its Korean exclusive licensee, Adidas Korea, filed an infringement claim seeking preliminary injunctions against eBay Gmarket, an internet shopping mall operator, alleging that eBay Gmarket failed to take protective measures for Adidas in preventing Adidas counterfeits from being sold in their online shopping mall. This is the first case in Korea where the Supreme Court is expected to establish a scope of duty on an online shopping mall operator in protecting the rights of trademark owners.

In trademark litigation in connection with ASICS shoes, individuals sold goods affixed with marks that are identical or similar to ASCIS’ registered trademarks. In addition, these individuals also filed trademark applications for these marks. ASICS filed criminal complaints and a civil claim against these individuals. “These individuals were found guilty of trademark infringement, and the civil claim is still pending,” says Kim.

ASICS also filed an opposition against their trademark applications and succeeded in leading KIPO to reject the applications. This is one of the largest attempts of a famous Japanese sports brand to eliminate counterfeiters.

In Pan-West v. Katana Golf in the Seoul Central District Court, the court ruled that Pan-West’s trademark infringement claim against Katana Golf was trademark right abuse since Pan- West’s registered trademark Katana had not been used for a long time, and since Pan-West imported 200 golf clubs bearing the trademark in 2008 only after Katana Golf’s trademark became well known to consumers, says Nahm. An appeal is pending in the High Court.

Malaysia

The Intellectual Property Corporation of Malaysia (MyIPO) announced amendments to the Trade Marks and Patents Regulations in February 2011 which will result in a number of changes for trademark owners, including the introduction of expedited examination of trademark applications, says Wong Sai Fong, managing partner and co-head of the IP department at Shearn Delamore & Co in Kuala Lumpur.

“A request for expedited examination has to be made within four months of filing the application,” says Wong. “A request for expedited examination must be accompanied by a Statutory Declaration setting out the grounds for the request.”

Karen Abraham, a partner and co-head of the IP department at Shearn Delamore, says the official fees for all stages of a trademark prosecution have been raised substantially. “There are now additional fees to request for an oral hearing and when filing a series mark wherein the third and subsequent mark in the series will be subject to additional fees,” she says. Additionally, since the amendments came into force, documents can also be filed electronically for the first time.

Malaysia is expected to accede to the Madrid Protocol shortly (see Asia IP, May 2011). “This is in line with our country’s obligation to accelerate the establishment of an ASEAN Economic Community by the year 2015,” says Geetha K, director of the trademarks and industrial designs division at KASS International in Kuala Lumpur. “The Madrid Protocol simplifies registration of a trademark in several countries and will be beneficial to trademark owners locally and abroad,” she says.

Geetha K says that other changes to Malaysian trademark practice include the acceptance of non traditional marks as trademarks, including 3D marks, scent marks, sound marks, animated marks and other non-conventional marks. In line with the amendments proposed for the Patents Act, the amended Trademarks Act will also allow trademark owners to mortgage their trademarks or use them to secure loans.

“A lot of [changes on the wish lists of IP practitioners] have been incorporated in the amended Trademark Act and Regulations,” she says. “Hopefully, the harmonization of our law with foreign trademark laws will be found favourable to foreign trademark owners.”

Long delays in the grant of registrations – particularly due to delays caused when applications reach the examination and hearing stages – continue to plague owners of trademarks and brands in Malaysia. “The amendments which introduced expedited examination of trademarks may, to a certain point, ease this problem, although it would only apply to applications filed after February 15, 2011, wherein a request would have to be made and approved before an application can proceed using expedited examination,” says Wong.

Linda Wang, a partner at Tay & Partners in Kuala Lumpur, says inconsistency remains in the decisions of MyIPO officers in raising objections and in the acceptance and rejection of trademarks.

Trademark Prosecution

Tier 1

Henry Goh & Co

Raja, Darryl & Loh

Shearn Delamore & Co

Shook Lin & Bok

Skrine

Tier 2

Advanz Fidelis

RamRais & Partners

Tay & Partners

Wong & Partners

Wong Jin Nee & Teo

Trademark Contentious

Tier 1

Shearn Delamore & Co

Shook Lin & Bok

Skrine

Sreenevasan

Wong Jin Nee & Teo

Tier 2

Rahmat Lim & Partners

Raja Darryl & Loh

RamRais & Partners

Tay & Partners

Wong & Partners

IP owners continue to face challenges on the enforcement front. “The enforcement of IP is a huge challenge with counterfeiters becoming more sophisticated and rampant,” says Abraham. “Customs should be accorded more powers to prohibit the import and export of counterfeit goods at the border, as they are in the most strategic position to deal with such goods. It is also hoped that the border measure provisions are amended to remove the requirement to provide shipment details and provide security in order to make it easier to invoke these provisions.”

Abraham also notes that under current legislation, the requirement of showing confusion and deception remains a key ingredient before liability can be established. “The inclusion of a dilution claim would prevent a third party from taking unfair advantage of the distinctive character of a trademark without the strict need and requirement to show confusion and deception,” she says. “Although the current amendments to the act may include dilution, it is hoped that this would be appropriately taken into account in order to allow for the recognition of the loss caused by the erosion and debasement of the distinctive character of a trademark.”

Key Cases

In the continuing saga of the fight over the Giordano trademark in Malaysia, Yong Teng Hing had sought leave to appeal against the decision of the Court of Appeal in Yong Teng Hing v. Walton International. At the Federal Court, Tay & Partners had taken a preliminary objection to Yong’s leave application on the basis that the Federal Court has no jurisdiction to entertain the appeal as the matter (an opposition commenced at the Registry of Trade Marks) was heard on appeal to the High Court and the provision of the Courts of Judicature Act on granting of leave to appeal to the Federal Court states that a matter can only be appealed to the Federal Court if it is one that originates from the High Court.

The issue of whether the High Court was hearing the appeal from the Registrar’s decision as an appellate court or in the exercise of its original jurisdiction was to be decided for the first time by the Federal Court which reserved its judgment for almost a year. The Federal Court gave its written judgment in July 2011, stating that it has jurisdiction to entertain a matter which originated from the decision of the Registrar of Trade Marks as the High Court was exercising its original jurisdiction when hearing an appeal against the Registrar’s decision. The Federal Court expressly departed from another decision rendered earlier (by another quorum of the same apex court) on the same issue on jurisdiction in relation to a different subject matter.

“The rationale and decision of the Federal Court sets a binding precedent not only on appeals pursuant to the Trade Marks Act 1976 but also appeals pursuant to the Patents Act 1983,” says Wang. The proper hearing for Yong’s leave application has been set for another date.

Shearn Delamore & Co acted on behalf of the Agricultural and Processed Food Products Export Development Authority of India (APEDA) in its suit against Syarikat Faiza, the first case in line with geographical indication in Malaysia. The applicants, consisting of APEDA, The Tamil Nadu Tamil University (TNAU), Indian rice farmers and Indian rice exporters, had commenced cancellation proceedings in the High Court for the cancellation of the registration of the Ponni trademark from the Register. The High Court ruled that Ponni is recognizable among the trade and public as a variety of rice.

Syarikat Faiza’s registration of Ponni as a trademark allows the claim on Ponni as a trademark for all varieties of rice, but it was held that the use of Poni on anything other than actual Ponni rice is likely to cause confusion as the trade and public would assume that the use of the mark on rice denotes that the rice is Ponni rice with its particular characteristics and originating from the Tamil Nadu region, even if such rice are in fact not Ponni rice.

“The decision of the High Court gives form to the disqualification under the Trade Marks Act 1976 for the registration of geographical indications as trademarks,” says Abraham. “While such disqualification under the Act appears straightforward, the extent to which the Courts have been willing to recognize a mark as a geographical indication has not previously been clearly set forth. It would appear that the High Court in this case has been willing to accept that any acceptance by members of the public that a mark is a geographical indication would mean that such a mark is disqualified for registration as a trademark.” Jasbeer, Nur & Lee advised Syarikat Faiza.

KASS International advised Malaysian food and beverage companies in a trademark expungement and passing off case on how to defend and counter claim against the plaintiff in the suit, which involved the Sri Paandi trademark for Indian food. Geetha K says the case was well publicized by the media due to the involvement of a well-known brand in Malaysia and a multimillion dollar business.

The court found in favour of Raytheon in a trademark action in Lockheed Martin v. Raytheon. Lockheed Martin is a security company in the business of researching, developing and manufacturing jet fighters, missiles and space systems, while Raytheon is in the similar business of research, developing and manufacturing defence and aerospace systems and equipment. Lockheed Martin filed an application to expunge Raytheon’s Paveway trademark used for laser-guided bombs that are manufactured and sold by Raytheon to the US government and militaries around the word. Lockheed Martin also manufactures and sells similar laser-guided bombs under the name Paveway Laser Guided Bombs to the US government and to militaries around the world.

Lockheed Martin claimed that the term Paveway is generic term for laser-guided bombs which function based on similar or identical technology, and that Raytheon does not own the right to the term Paveway. The case evaluated principles of trademark first use, indicator of origin and distinctiveness in the context of laser-guided bombs and military weaponry which are marketed and sold through unique trade channels. Skrine advised Raytheon, while Lee Hishamuddin Allen & Gledhill acted for Lockheed Martin.

New Zealand

New Zealand is in the process of updating its intellectual property laws, including its trademarks law.

The Trade Marks (International Treaties and Enforcement) Amendment Bill received its second reading the New Zealand parliament on August 16, 2011. The Bill amends both the Trade Marks Act 2002 and the Copyright Act 1994, with the most notable amendments proposed in the bill reflectling the New Zealand Government’s decision to join the Nice Agreement, the Singapore Treaty, and the Madrid Protocol. It bolsters border protection measures to combat the growing trade in counterfeit goods and clarifies the law relating to trademark infringement by parallel imported goods, says Frank Callus, principal at Henry Hughes Patent & Trade Mark Attorneys in Wellington.

Trademark Prosecution

Tier 1

AJ Park

Baldwins

Buddle Findlay

Henry Hughes

Simpson Grierson

Tier 2

Hudson Gavin Martin

James & Wells

Kensington Swan

Minter Ellison Rudd Watts

Pipers

Trademark Contentious

Tier 1

AJ Park

Baldwins

Bell Gully

Henry Hughes

James & Wells

Tier 2

Buddle Findlay

Chapman Tripp

Hudson Gavin Martin

Kensington Swan

Simpson Grierson

Lawyers at AJ Park, in a client alert on the firm’s website, note that the Bill faces two more stages before it is passed; the committee of the whole House and the third reading. The firm says it is expected the Bill will come into effect in mid-2012 following the drafting of regulations to support the changes.

Relatively few IP cases reach the New Zealand Court of Appeal, and fewer trademark cases do, which made NV Sumatra Tobacco Trading Company v. British American Tobacco (Brands)notable.

The Court of Appeal ruled in favour of British American Tobacco (Brands) Incorporated (BAT) in its opposition to applications filed by NV Sumatra Tobacco Trading Company to register the trademarks Lucky Draw and Lucky Dream for cigarettes and related products. The Court held that the Lucky Draw and Lucky Dream marks are similar to BAT’s Lucky Strike marks. In coming to its decision on this point, the Court confirmed the importance of the first portion of a mark for purposes of comparison. Use of the word “Lucky” followed by a single syllable word was held to create a risk of confusion – even though neither “Draw” nor “Dream” sound like “Strike.” The conceptual similarity between the marks was another key consideration which led to the Court’s finding.

NV Sumatra’s appeal was dismissed on every ground pleaded, BAT’s cross appeal was allowed, and the Court ordered that NV Sumatra pay BAT’s costs for a standard appeal (as well as for second counsel). The case is particularly significant as it deals with establishing trademarks and issues of confusion between marks in a highly restrictive sales and advertising environment, namely the promotion and sale of tobacco products in New Zealand, where the promotion of the goods and their marks is virtually prohibited. BAT was represented by Wellington-based Buddle Findlay, while NV Sumatra was advised by Cullen & Co of Brisbane, Australia.

Kensington Swan is acting for Cottonsoft Limited and its Indonesian parent, PT Purinusa Ekapersada, against SCA Hygiene Australasia Limited and its Swedish parent (owners of the Purex brand in relation to toilet tissue) in defending a trademark infringement case. The firm is providing advice and representation to the Cottonsoft parties to defend an interim injunction application. The claim brought by the SCA parties alleged trademark infringement, passing off and breach of the Fair Trading Act. It concerned use of the trademark Paseo Pure in relation to toilet tissue and other paper products, and was based on the SCA parties’ rights in the trademark Purex. The interim injunction application was resolved without a hearing and the firm continues to act in resolving various ongoing issues.

“This case has been hard fought as the market is very competitive,” a firm spokesperson told Asia IP. “The SCA parties place considerable value on the Purex brand, which is one of the market leaders. They were attempting to prevent all use of the word Pure by Cottonsoft, but the resolution reached has been considerably less constraining on Cottonsoft than the SCA parties were seeking.”

The amendments aim to streamline the procedures for inter partes cases, says Fider. Among the salient provisions of the amendments to the IPO Rules and Regulations on Inter Partes Proceedings are the following:

 The total period of time to file the Verified Notice of Opposition has been reduced to a maximum period of 90 days from the date of publication of the application sought to be opposed (as compared to the 120 day period under the old rules).

 The total period of time to file the Verified Answer (or responsive pleading) is reduced to a maximum period of 90 days from the date of receipt by the respondent of the Notice to Answer (as compared to the 120-day period under the old rules).

 The opposer or petitioner may attach to the opposition or cancellation pleading photocopies of documentary evidence and/or affidavit of witnesses in support thereof and/or photographs of object evidence, provided that the original and/or certified copies of the documentary evidence and the actual object evidence are submitted/presented during the original schedule of the preliminary conference.

 The Verified Notice of Opposition or Verified Petition for Cancellation must be accompanied by, among others, duly authenticated/consularized documents, e.g., Verification, Certification against Forum Shopping, Secretary’s Certificate (if applicable) or any other similar documents evidencing the authority of the signatory thereof, Special Power of Attorney, and any other related documents. The execution and authentication of these documents must be done before the filing of the opposition or petition. In any case, says Fider, only photocopies thereof are attached to the opposition or petition, the opposer or petitioner is given five days upon receipt of the order issued by the IPO to complete or cure the defect (i.e., submission of the original copies of these documents).

 The remedy in case of an adverse decision is the filing of an appeal with the IPO’s Office of the Director General within 30 days from receipt of the decision. The filing of the Motion for Reconsideration is not allowed.

In October 2010, the IPO issued the Rules of Procedure for IPO Mediation Proceedings. “The purpose of the IPO Mediation Rules is to encourage the use of alternative dispute resolution as part of resolving cases filed before the IPO,” Fider says.

Under the IPO Mediation Rules, the following cases filed with the IPO are required or mandated to undergo mediation: (a) administrative complaints for violation of intellectual property rights and/or unfair competition; (b) inter partes cases (i.e., opposition and cancellation cases); (c) disputes involving technology transfer payments; (d) disputes relating to the terms of a license involving the author’s rights to public performance or other communication of his work; (e) cases appealed before the IPO’s Office of the Director General from decisions of the IPO-BLA and IPO’s Documentation, Information, and Technology Transfer Bureau; and (f) all other cases which may be referred to mediation during the settlement period as declared by the IPO Director General.

On April 5, 2011, the IPO released the Rules of Procedure for Arbitration Proceedings involving intellectual property rights. Bayani B Loste, junior partner at Fortun Narvasa & Salazar in Makati says the Rules:

 Cover all disputes involving IP rights where parties have agreed to submit disputes to arbitration, which include IP already registered, recognized without registration, in the process of registration, registrable under Philippine laws, or all other disputes involving breach of IP rights actionable under Philippine law;

 Require an arbitration agreement which may be in the form of a separate contract between the parties or a clause in such a contract, allows parties to arbitrate after the conflict has arisen;

 Have an arbitration tribunal with the power to resolve issues regarding its own jurisdiction, including any objections to form, existence, validity, or scope of the arbitration agreement based on substantive and procedural laws;

 Require confidentiality of proceedings;

 Say that hearings may proceed solely on the basis of documents submitted;

 Allow parties to choose the law or rules of law to be used;

 Requires proceedings to be completed within eight months following the delivery of the statement of defense by the respondent or the establishment of the arbitration tribunal, whichever comes later;

 Gives the arbitration tribunal only three months to make the award after the close of the arbitration proceedings;

 Allows monetary awards to be in any currency;

 Says that parties are deemed to have waived their right to appeal or assail the award in a court of law or judicial authority; and

 Allows parties may settle at any time prior to the end of the proceedings.

Fider says that infringement remains a major concern for trademark owners, especially for well-known marks which are not registered in the Philippines. “One of the significant challenges for trademark practitioners is how to deal with local applicants who apply for the registration of marks which clearly belong to other individuals and/or entities (i.e., well-known marks). These unscrupulous applicants usually file local applications ahead of the real trademark owners and before such owners enter the Philippine market,” he says.

“Accordingly, trademark owners who do decide to register and/or use their trademark in the country are faced with a very real problem when their applications are blocked by the earlier applications of these third parties. This effectively prevents trademark owners from registering their marks and worse, from entering the local market. Consequently, trademark owners are held hostage by these unscrupulous applicants, and in some cases have no other choice but to buy out or purchase the prior application or registration of such parties.”

Fider says IP practitioners hold out hope that the IPO will be more vigilant in screening applications by maintaining a list of suspicious applicants who are known to engage in this scheme.

Trademark Prosecution

Tier 1

ACCRALAW

Poblador Bautista & Reyes

Quisumbing Torres

SyCip Salazar Hernandez & Gatmaitan

Villaraza Cruz Marcelo & Angangco

Tier 2

Bengzon Negre Untalan

Carag, Caballes, Jamora & Somera Law Offices

Castillo Laman Tan Pantaleon & San Jose

Esguerra & Blanco

Hechanova Bugay & Vilchez

Trademark Contentious

Tier 1

ACCRALAW

Bucoy Poblador & Associates

Quisumbing Torres

Romulo Mabanta Buenaventura Sayoc & de los Angeles

SyCip Salazar Hernandez & Gatmaitan

Tier 2

Castillo Laman Tan Pantaleon & San Jose

EB Astudillo & Associates

Ortega Del Castillo Bacorro Odulio Calma

& Carbonell

Sapalo Velez Bundang & Bulilan Law Offices

Siguion Reyna Montecillo & Ongsiako

Ramon S Esguerra, managing partner at Esguerra & Blanco Law Offices in Makati, notes that IP rights holders continue to cite as challenge the long delays in the judicial system. “Some of these challenges are being addressed by steps taken to build and strengthen institutions that promote the protection and advancement of IP rights, and building a legal framework that advances the protection of IP rights, such as the creation of IP Courts or IP dedicated courts,” says Esguerra. “Unfortunately, despite the continuing efforts of some Philippine officials to improve enforcement, there is no true deterrent mechanism in place to dissuade IPR infringers from their illegal activities.”

Key Cases

In 2010, San Miguel Corporation was able to secure favourable decisions from the Intellectual Property Office’s Bureau of Legal Affairs (IPO-BLA) in connection with four opposition cases filed by Société des Produits Nestlé against San Miguel’s San Mig Coffee marks.

Nestlé claimed that SMC’s use of the mug device (albeit in non-red colors) as part of its San Mig Coffee label marks would lead to consumer confusion, arguing that it has the exclusive right to use the mug device with respect to coffee products. San Miguel argued that its San Mig Coffee label marks are not confusingly similar to Nestlé’s marks in view of the other elements appearing in its label marks, and that its use of the mug device is totally different from Nestlé’s red mug device. The IPO-BLA upheld San Miguel’s position, ruling that: (1) the marks involved are not confusingly similar; (2) the mug device is not the dominant feature of San Miguel’s label marks; and (3) the manner by which the mug device is depicted in San Miguel’s San Mig Coffee label marks is totally distinct and different from Nestlé’s red mug device.

Nestlé is currently appealing the decisions of the IPO-BLA with the IPO’s Office of the Director General. These cases are important because they will determine whether Nestlé indeed has exclusivity over the use of the mug device per se (regardless of colour) with respect to coffee products. Nestlé’s and San Miguel’s coffee products are currently the more popular brand of coffee products in the local market. San Miguel was advised by Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW), while Nestlé was advised by Sapalo Velez Bundang & Bulilan.

ACCRALAW is also advising McDonald’s Corporation in a pending contempt case filed by McDonald’s against the proprietors of LC Big Mak in the Philippines. In 2004, acting for and on behalf of McDonald’s, the firm was able to secure from the Philippine Supreme Court a favourable decision declaring that the marks LC Big Mak and Big Mak are infringing McDonald’s rights over its Big Mac trademark. A writ of execution was issued by the trial court to enforce the said decision, and was served on the respondent. However, the decision was not fully executed, which prompted McDonald’s to file an action with the trial court to declare the respondent in contempt. The contempt case is pending with the Makati trial court.

Quisumbing Torres, the Taguig-based Philippines member firm of Baker & McKenzie, represented a leading US-based pre-need health insurance provider in a trademark cancellation action filed against its mark by a Philippine-based pre-need health insurance provider. The cancellation case was decided in favour of the firm’s client by the Director General of the Intellectual Property Office, who declared that the mark involved belonged to the client by virtue of prior use, says partner Pericles Casuela.

“This case confirmed that the use of services of a trademark owner based abroad can be established through evidence of the availment of the services of the trademark owner through its affiliated establishments in the Philippines,” says Casuela. The adverse party has appealed to the Philippine Court of Appeals.

Coffee Partners, Inc v. San Francisco Coffee & Roastery, Inc reiterated a 1992 court ruling (Philips Export BV v. Court of Appeals, promulgated before implementation of the Intellectual Property Code of 1998) that a trade name need not be registered before the owner of such trade name could file an infringement action against the owner of an infringing trade name as long as the unregistered trade name is being used in commerce.

The Supreme Court of the Philippines compared the earlier trademark law with the present law and explained that while the earlier law required the registration of a trade name or mark, the new trademark law expressly removed the necessity of prior registration for an infringement action to proceed. The Coffee Partners case effectively removed the primacy of trademark registration over actual bona fide use, says Loste of Loste of Fortun Narvasa & Salazar.

In Berris Agricultural Co., Inc, v. Norvy Abyadang, the Supreme Court went back to the basic doctrine of trademark ownership in deciding that registration of a trademark merely creates a prima facie presumption of ownership. “The High Court ruled that this presumption of ownership can be negated by proof of nullity of the registration, by failure of the trademark registrant to use the mark in commerce, or by evidence of prior use of a similar mark by another person,” says Loste. “Berris Agricultural concludes that trademarks are still creations of use and belong to the person who first used the marks in commerce.”

Singapore

The Intellectual Property Office of Singapore (IPOS) announced the launch of the IP Competency Framework (IPCF) on May 25, 2011. The IPOS has developed the IPCF to define the competencies required for key IP professionals and practitioners in the industry and accredit the attainment of these competencies into Continuing Professional Development qualifications that are recognized by the industry, says Stanley Lai, partner and head of the intellectual property and technology group at Allen & Gledhill. “The IPCF is the first of its kind in the world on a nationwide scale,” says Lai.

Under the IPCF, four key IP occupational levels have been identified, with 57 competency units initially created. “These will be developed and validated into standards with key industry experts from the IP services sector, academia, and the legal profession over the next three years,” Lai says. “The IPOS will also accredit training providers who will certify successful programme participants.”

The IPOS will partner with the Singapore Workforce Development Agency to create a new sector for IP in Singapore under the Workforce Skills Qualification (WSQ) under a new framework known as IP WSQ.

The IPOS has also signed a Memorandum of Cooperation with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Office for the Harmonization of the Internal Market (OHIM) (the Trilateral Partners) to validate an agreed list of goods and services acceptable or otherwise in the four jurisdictions (the Trilateral List).

The Trilateral List expands the Nice Classification administered by the World Intellectual Property Organization (WIPO), and facilitates consistency and harmonization in the classification of goods and services internationally.

“This co-operation provides trademark applicants with more certainty in the acceptability of the classification of goods and services before the participating offices,” says Lai. “Applicants filing for trademark protection in two or more of these jurisdictions will save time and costs as they may rely on the same set of goods and services in their applications.”

On April 21, 2011, the IPOS announced that the list of acceptable entries in the Trilateral List under the Memorandum of Cooperation with the Trilateral Partners is now available on the IPOS e-filing system of the application to register a trademark as well as the Classification Search on eTrademarks Search.

Dedar Singh Gill, managing director of intellectual property at Drew & Napier, notes that there have been several recent instances where infringing goods or cargo have reached Singapore in transit. “Allowing custom seizures of infringing goods and cargo in transit [would] assist trademark owners,” says Gill.

The Singapore Courts have started to take an increasingly stringent approach when deciding whether marks are deemed to be similar, says Andy Leck, a principal at Baker & McKenzie. Wong & Leow. “This is a challenge for trademark owners to prevent similar looking marks from diluting the distinctiveness of their existing trademarks.”

Leck says the increasing stringency was seen recently in Valentino Globe BV v. Pacific Rim Industries Inc, which was an appeal by Valentino Globe against the decision of the High Court where the Judge rejected Valentino’s opposition to Pacific Rim Industries’ application for the registration of its Emilio Valentino & V Device in Class 25 for leather and imitation of leather, and goods made of these materials and not included in other classes.

Trademark Prosecution

Tier 1

Amica Law

Donaldson & Burkinshaw

Drew & Napier

Ella Cheong Spruson & Ferguson

Lee & Lee

Tier 2

Allen & Gledhill

ATMD Bird & Bird

Baker & McKenzie.Wong & Leow

Ravindran Associates

Rodyk & Davidson

Trademark Contentious

Tier 1

Allen & Gledhill

ATMD Bird & Bird

Baker & McKenzie.Wong & Leow

Drew & Napier

Lee & Lee

Tier 2

Amica Law

Donaldson & Burkinshaw

Infinitus Law Corporation

Ravindran Associates

Rodyk & Davidson

The appeal was ultimately dismissed and the marks set out above were held not to be similar. “The case shows a more stringent approach being taken by the courts in determining whether marks are deemed to be similar,” says Leck. “It also reiterates the difficulty that rights owners will face in showing confusion if their products are deemed to be ‘upmarket.’” Leck says the case also reiterates the difficulty in establishing bad faith in Singapore.

Key Cases

Baker & McKenzie.Wong & Leow successfully represented Clinique Laboratories, a subsidiary of Estée Lauder Inc, before the Singapore High Court where judgment was rendered for trademark infringement and passing off arising from the defendant’s use of the well known trade mark Clinique in relation to their skin care products, consultation services and aesthetic business. Although the defendants appealed the decision to the Singapore Court of Appeal, the firm were successful in having the appeal dismissed.

“In dismissing the appeal, the Singapore Court of Appeal did not overturn the findings of the High Court in its landmark decision, an affirmation that makes the Clinique mark the first to be judicially recognized as well known to the public in large in Singapore,” says Leck.

The Singapore High Court considered the scope of Sections 55 and 55A in the Trade Marks Act for the protection of wellknown trademarks in Guy Neale & Ors v. Ku De Ta. The sections in question relate to the protection and permitted use of well-known trademarks.

“The decision handed down by the Assistant Registrar held that the proprietor of a well known mark is entitled to restrain the use in Singapore of a registered trademark in relation to goods or services for which the latter is registered if (amongst other things) the allegedly offending trademark is not validly registered,” says Lai. “It is also not premature to bring an action under Section 55 of the Act to restrain the use of the allegedly offending registered trademark before the invalidation of the said registered trademark. Allen & Gledhill advised Guy Neale; Rodyk & Davidson advised Ku De Ta.

In Ozone Community Corp v. Advance Magazine Publishers Inc, Ozone successfully appealed to the High Court the decision of the Trade Marks Registry which had disallowed its trademark Hysteric Glamour from being registered due to the earlier mark Glamour. The High Court held that the distinctiveness of an earlier trademark was an important factor to be considered in the inquiry into the similarity between the marks, and this factor was not confined to the analysis of the likelihood of confusion. The Court of Appeal subsequently upheld the High Court’s decision. Drew & Napier advised Ozone, while Allen & Gledhill advised Advance.

In Festina Lotus v. Romanson, Festina Lotus opposed Romanson’s application for the mark J.Estina and device on the ground that it is confusingly similar to Festina’s Festina and device mark. The High Court held that in view of the growing phenomenon of brands crossing-over between goods that one would not commonly associate with each other, eg, cigarettes and clothing, the idea of “aesthetic complementarity” or “aesthetic harmony” was considered in determining whether there was similarity of goods. The licensing out of one’s trademark or engaging in a sister brand or diffusion line may inevitably lead to the same trademark being found on a multitude of goods available in the market. As such, certain goods like necklaces and clothing may be related and a broad classification of these goods as “fashion accessories” or “lifestyle goods” may be justified.

Sri Lanka

Like many other Asian nations, IP owners in Sri Lanka continue to face challenges in enforcement with regard to the entry of counterfeits into Sri Lanka, says J M Swaminathan, senior partner at Julius & Creasy in Colombo.

While Sri Lanka has not seen any legislative or regulatory changes in the past year, Swaminathan says he would like to see the country allow new types of marks, such as sound marks and smell marks, to be registered. “These marks currently fall under the ambit of Unfair Competition,” he says. “However, if they could be registered, steps could be taken to institute proceedings on infringement of their rights as well.”

Swaminathan says he sees no changes to Sri Lanka’s trademarks law on the horizon, noting that the country amended its IP statute to be in line with TRIPS provision in 2003.

Several high profile trademark cases have made the news in Sri Lanka, including Chevron Lubricants Lanka PLC v. Dulaksha Enterprses (Pvt) Ltd & one other, which concerned the adulteration of Caltex lubricants. Swaminathan says the plaintiff filed an action against the defendants for the sale of adulterated lubricants under the Caltex brand name, claiming damages. The Court issued an enjoining order and the matter is fixed for objection and answer of the defendants.

In Shaw Wallace & Hedges Ltd v. Nandana Wickramanayake (NE Traders), alleging the infringement o Captain Jack Mackerel, action was instituted to halt the sale of canned fish under the brand Capital, which uses a get up similar to that of the Captain brand. The court issued an ex parte enjoining order and an interim injunction after hearing both parties. The matter is presently fixed for trial.

Trademark Prosecution

Tier 1

FJ & G de Saram

John Wilson Partners

Julius & Creasy

Murugesu & Neelakandan

Tier 2

DL & F De Saram

Nithya Partners

Shaam & Associates

Sudath Perera Associates

Varners

Trademark Contentious

Tier 1

John Wilson Partners

Julius & Creasy

Murugesu & Neelakandan

Sudath Perera Associates

Tier 2

DL & F De Saram

FJ & G de Saram

Nithya Partners

Shaam & Associates

Varners

Taiwan

In September 2010, Taiwan and China entered into the Cross-Strait Agreement on IPR Protection and Cooperation, by which the parties agreed to mutually recognize the right to priority for trademarks, patents and plant varieties for which a first application has been submitted. In addition, says Yvonne Lin, a partner at Formosan Brothers Attorneys-at-Law in Taipei, the parties shall set up offices to report piracy, coordinate counter measures, prevent the registration of well-known trademarks by non-rightful users, and to handle other matters. Lin says that accordingly, Taiwan will make amendments to its regulations governing priority rights.

On May 31, 2011, the Legislative Yuan passed an amendment to the Trademark Act, which was last revised in 2003. The amendment has revised 71 articles, added 26 and deleted nine, resulting in a total of 111 articles in the Trademark Act. The promulgation date of the amendment is to be determined after corresponding measures are completed, says Crystal Chen, a partner at Tsai Lee & Chen Patent Attorneys & Attorneys at Law.

Trademark Prosecution

Tier 1

Formosa Transnational Attorneys at Law

Lee and Li

Saint Island International Patent & Law Offices

Tai E International Patent & Law Office

Taiwan International Patent & Law Office TIPLO

Tier 2

Baker & McKenzie

Deep & Far

Formosan Brothers Attorneys-at-Law

Tsai Lee & Chen

Union Patent Service Center

Trademark Contentious

Tier 1

Formosa Transnational Attorneys at Law

Lee and Li

Saint Island International Patent & Law Offices

Taiwan International Patent & Law Office TIPLO

Tsar & Tsai Law Firm

Tier 2

Baker & McKenzie

Deep & Far

Tai E International Patent & Law Office

Tsai Lee & Chen

Winkler Partners

With the amendments, the scope of protectable trademarks has been extended, says Joseph S Yang, senior counselor at Lee and Li. “Any sign that is distinctive enough to identify the source of goods or services and to distinguish these goods or services from those offered by others can be filed for registration as trademark,” he says. “In addition to 3D devices, single colours, colour combinations and sound, the non-conventional marks that are already protectable under the current Act, the Amendment further extends protection to motion marks and hologram marks.”

Yang notes the following new provisions regarding trademark infringement under the amendment:

 To coordinate inconsistent viewpoints in juridical practice, the Amendment clearly specifies that a damage claim can only be made when the infringer has a subjective intent to commit the infringement act, either intentionally or negligently.

 To strengthen the protection of well-known trademarks, the Amendment clearly specifies that an act is deemed to be trademark infringement if there is “likelihood of dilution” of the distinctiveness or reputation of a well-known trademark, comparing to the “actual dilution” requirement under the current Act.

 In addition to direct infringement acts, such as use of infringing mark on the goods for sales in the marketplace, the Amendment further defines the auxiliary acts, such as the manufacture, import or export of labels, tags, packaging bearing the infringing trademark, as trademark infringement.

 The Amendment defines the act of knowingly display or sales of infringing products through electronic media or internet as trademark infringement, which may be subject to criminal liabilities.

Additionally, to perfect relevant measures for the enforcement of border control, the Amendment clearly provides a legal basis for Customs to detain goods and authorizes Customs to provide the right holder with relevant information about the infringing goods for investigation of the infringement or initiation of lawsuits, says Yang. “Under the Amendment, by providing bond, the trademark right holder may ask for samples of the detained goods for evaluation of infringement off-site.”

Julia YM Hung, a partner at Saint Island International Patent & Law Offices, says that presently, the detention and seizure of imported or exported trademarked goods suspected of infringement in Taiwan is conducted according to the Operational Directions for Customs Authorities in Implementing Measures for Protecting the Rights and Interests in Patents, Trademarks and Copyrights. A trademark owner may, according to said directions, file with Customs a complaint accompanied by the required information and documents.

“Once the complaint is accepted, the trademark owner will be notified and will need to show up at the customs office within a prescribed time (within four hours for export airfreight, and within 24 hours for import airfreight and for import/export seafreight) to verify the suspected counterfeit goods,” says Hung. “Customs will detain the concerned goods if they are found to be counterfeit.”

Furthermore, customs officials may conduct random goods inspections, she says. “If any imported or exported goods suspected of infringement are located, Customs will notify the concerned trademark owner or trademark agent, who must show up at the customs office to verify the concerned goods within one business day,” says Hung. Once the goods are verified to be counterfeits, the importer/exporter of the goods will be requested to provide relevant licensing documents.

“In the absence of such documents, the goods will be detained by the customs, and the case will be transferred to the judicial authorities,” she says. “On the other hand, if the trademark owner or trademark agent fails to show up for verification purposes within the prescribed time, the customs will release the goods after taking a sample.”

The amended law will impose more burden on a trademark owner when he or she files a non-use cancellation action or an invalidation action, says Joy Pan, a partner at Baker & McKenzie in Taipei.

“He or she will have to prove the use of his or her mark in the past three years. This is especially so when the trademark is registered for defensive purposes,” she says. Pan notes that deletion of the minimum damage claim in an infringement case will increase a trademark owner’s burden to prove losses, and that such deletion may also encourage infringing activities.

Submitting a suitable and accurate display associated with the goods is the biggest challenge facing the owners in Taiwan, says Perkin Liaw, manager of international service at Tai E International Patent & Law Office.

“Use evidence is always required for submission to overcome the objections, oppositions, revocation and other matters raised by the examiners or related parties [and] it is necessary to prepare and present evidence in the protection of the owners’ trademark,” says Liaw. “However, the methods and manners of the evidence that owners provide are not always in line with the requirements of the Taiwan Intellectual Property Office. For instance, TIPO may reject evidence such as purchase orders, shipping documents, or invoices, if those documents lack the actual trademark. Trademark affixation is crucial when considering such paperwork as use evidence.”

However, Liaw says, at the present, owing to the business model, trademark affixation cannot be practiced well in some business trade, “which undoubtedly triggers an issue on what is considered a ‘suitable and accurate display associated with the goods,’ resulting in a very thin and very fuzzy line between what is and isn’t acceptable as showing trademark use.”

Infringement through online media is a serious concern and continues to grow and diversify, says Peter J Dernbach, a partner at Winkler Partners. “It is increasingly difficult for trademark rights owners to develop an effective enforcement strategy,” he says.

Key Cases

Winkler Partners represented the Intel Corporation in Intel Corp v. Intel-Trans. At issue was the use of the elements from the well-known registered mark of another as one’s company name, trade name, domain name or other indication of business. Previous interpretation would limit the “company name” identified in Article 62 to Chinese language company names, as those are the only names registered with the competent authorities upon incorporation. In this case, the Supreme Court clarified that a company’s English name, which may be registered with the Board of Foreign Trade when the company applies for an Import-Export Permit, should be deemed an “other indication of business operation or origin.”

Therefore, says Dernbach, while the foreign name used by the company may not be considered a “company name” for the purposes of Article 62, the owner of a famous registered mark that is comprised of foreign language elements may still assert Article 62 against other parties who use the elements of their famous registered marks as part of their foreign company name if such use causes a likelihood of confusion or actual dilution of the distinctiveness or reputation of the famous registered mark.

Baker & McKenzie acted for BeautyBank, an affiliate of Estée Lauder companies, in filing for a declaratory judgment and a non-use cancellation action against Sunnix International, a Taiwanese company. BeautyBank is a leading cosmetic company. Sunnix, which is notorious for claiming trademark infringements against renowned cosmetic companies and asking for huge compensation, wrote to the client’s Taiwan affiliate alleging trademark infringement.

“As the trademark based on which Sunnix asserted its trademark rights is descriptive, the client attempted to negotiate with Sunnix for an amicable resolution, but did not succeed,” says Pan. “Instead of awaiting legal proceedings commenced by Sunnix, our team was engaged by the client to take a more aggressive approach by filing for a declaratory judgment and a non-use cancellation action against Sunnix.”

The IP Court rendered a judgment in favour of Estée Lauder’s Taiwan affiliate on March 2, 2011; Sunnix did not appeal.

In May 2011, Taiwan’s IP Court affirmed that the use of the word Darjeeling on women’s lingerie may dilute the distinctiveness of the mark owned by the Darjeeling of Tea Board of India. Tsai Lee & Chen represents the Tea Board of India in this case.

In 2009 the Taiwan Intellectual Property Office upheld the trademark opposition against the registration of Darjeeling filed by Delta Lingerie. The Appeal Board later revoked and remanded the TIPO’s decision, believing that the Darjeeling certification mark is not a highly well-known mark commonly known by the general public in Taiwan, and that the consumer’s confusion is not likely owing that the markets of the goods/services of the two marks in question are obviously distinguishable and not in competition.

In dissatisfaction of the administrative decision rendered by the Appeal Board, the Tea Board of India filed Administrative Litigation with the Taiwan IP Court. The Court found the Appeal Board’s reasoning erroneous and affirmed the fame and reputation of Darjeeling mark in the mind of local public. Although the segments in the marketplace are obvious, objectively the use of Darjeeling on women’s lingerie may still disperse or dilute the attractiveness and character of Darjeeling of Tea Board of India as a strong indication to a single source of tea products. Delta Lingerie, however, had appealed to the Supreme Administrative Court, which is the last remedial resort for this certification mark dispute.

The owner of Doraemon, the well-known Japanese comic book/animation character, brought suit in Taiwan against an infringer who used the copyright work and trademark to manufacture and sell stuffed toys. The infringer was held guilty of Copyright Act and Trademark Action violations; the judgment was entered by the Taiwan Intellectual Property Court and became final in 2010.

With respect to the trademark issue, the defendant argued that the trademark owned by the complainant is a 2-dimensional device, not a 3-dimensional mark, so the trademark right in the mark does not extend to the use of the same device in 3-dimensional form (e.g. the stuffed toy in dispute). Despite the defendant’s argument, both the Supreme Court and the Intellectual Property Court agreed to the complainant’s answer to defendant’s argument, holding that trademark use under the Trademark Act does not refer to the use of the mark in 2-dimension form alone. Both courts found that the trademark device the defendant used on the stuffed toy will unquestionably be taken to serve as representation of the provenance of the product and that it is not some functional or decorative design as the defendant argued; therefore, the defendant’s use of the mark constitutes violation of complainant’s trademark right irrespective of the infringing device being 2-dimensional or 3-dimensional in form. Doraemon’s owners were represented by Taiwan International Patent & Law Office (TIPLO).

Thailand

Thailand continues to work towards amending its trademark laws to be compliant with the requirements of the Madrid Protocol, says Daniel Greif, co-head of intellectual property at Siam Premier International Law Office in Bangkok. “Thailand has agreed to join Madrid, along with the other ASEAN members. Among the amendments being considered are allowing smell trademarks and allowing multiple class applications,” says Greif, who notes that Thailand plans to access and be a member of Madrid Protocol before the end of 2012.

The Department of Intellectual Property (DIP) prepared a draft amendment of the Trademark and Copyright Acts that included criminal liability for buyers of counterfeit or pirated products and the commercial building landlords who ignore tenants who sell pirated goods. The draft was submitted to the Cabinet for review and approval.

“Unfortunately, on October 6, 2009, the Cabinet found that these are quite sensitive issues,” say lawyers at Tilleke & Gibbins in Bangkok. “Thus, the Cabinet rejected the draft amendments and asked the DIP to restudy these provisions to prevent misuse of these amended laws. Based on our recent discussions with DIP officers, it is likely that the draft provisions concerning the liability for buyers will be abolished, and the DIP is still considering the issue of landlord liability.”

The firm says that IP owners are limited on their ability to pursue legal actions against landlords for contributory infringement, as the trademark law does not explicitly have a provision for this offense. “The Office of Public Prosecution believes that court actions against landlords can be pursued according to Section 86 of the Penal Code as contributory infringement. However, IP owners have faced difficulties and require great effort in acquiring supporting evidence to initiate court cases against landlords. Collaboration among IP owners to jointly pursue the action against the landlord should be discussed.”

Greif says that trademark owners in Thailand continue to face challenges in front of the Trademark Registrar, whose practice is not yet consistently up to international levels.

“According to practices of most countries, the Trademark Registrar will examine a mark which consists of more than one word as a whole in determining the distinctiveness and/or identical or similar matters,” says Greif. “Take, for example, the mark Oatley. The registrar should not divide the mark into two words Oat and Ley – for the purpose of considering the distinctiveness and/or identical or similar issues.”

Greif says that in Thailand, the DIP, which is in charge of trademark registration, issued the Guideline for Trade Mark Registration for internal use. The Guideline provides that the Registrar has to consider a trademark word-by-word, which means the Registrar would divide the word Oatley into Oat and Ley, and try to find the meaning of each word that might have direct reference to quality and character of the goods covered in the application.

“This makes it difficult for applicants to register their trademarks in Thailand when compared to the systems of other countries,” he says.

Thailand is expected to introduce a Franchising Business Act within the next year, say lawyers at Tilleke & Gibbins. A public hearing on the Franchising Business Bill, organized by the Ministry of Commerce was held in March 2011.

Key Cases

The Tilleke & Gibbins IP litigation team won a major victory for Yara International, a leading Norwegian agricultural company, in a trademark cancellation action. The firm filed a civil suit in the IP&IT Court requesting the cancellation of 19 trademarks filed by the defendants and claiming that the defendants were passing off of the Yara trademarks.

The Court ordered the cancellation and withdrawal of 16 of the defendants’ trademarks containing logos and wording that infringed Yara’s mark. The Court also acknowledged Yara’s better right over those logos and trademarks and ordered the defendants to stop using the trademarks. Finally, the Court instructed the defendants to publish a summary of the judgment in local newspapers.

The firm also secured a victory for Kobe Steel, a top producer of welding products in Thailand, against a local infringer in a landmark case before the Supreme Court of Thailand. The Court affirmed the legitimate protection of Kobe Steel’s best-selling packaging and its famous brand. The Court also cancelled the registration of the infringer’s similar trademarks and prohibited the use of the similar company name.

Trademark Prosecution

Tier 1

Baker & McKenzie

Domnern Somgiat & Boonma

Rouse

Satyapon & Partners

Tilleke & Gibbins

Tier 2

Chavalit & Associates

Dej Udom & Associates

LawPlus

S & I International

Vidon & Partners

Trademark Contentious

Tier 1

Baker & McKenzie

Dej Udom & Associates

Domnern Somgiat & Boonma

Satyapon & Partners

Tilleke & Gibbins

Tier 2

Chavalit & Associates

LawPlus

Rouse

Siam Premier International

Vidon & Partners

Part of Kobe Steel’s resounding success at Court may be attributed to its innovative use of five separate trademark registrations, which collectively cover the entire package design, the firm said. The use of multiple trademarks to cover a single packaging design is a defensive strategy that market leaders can employ to protect their valuable brands against infringers who want to cash in on their success.

Siam Premier has conducted numerous successful anticounterfeiting actions and raids for its clients, including Nike, Adidas, Oakley, Ray Ban and Levi Strauss. One example of the firm’s work targeted fake Nike jerseys sold at a retail shop in Bannpong District, Ratchaburi Province in central Thailand.

In June 2011, acting on instructions from the client, the firm’s raid team conducted a market survey in Ratchaburi Province. The objective of the survey was to identify shops and street stalls which were selling counterfeiting and/or infringing the Nike International registered trademarks. One street stall was identified by Siam Premier. The firm filed a complaint with the IPIT court in Ratchaburi Province in order to obtain permission and a search warrant. Police officers and Siam Premier raid team members conducted enforcement at the building.

A total of 85 infringing items which were seized by police. The seizures and the offenders, Chatwut Buasri, was charged under the Thai Trademark Act with selling, or offering for sale, goods bearing the Trademark of another. The offender was released on bail and the case was heard by the court the following day. The offender pleaded guilty and the firm is now awaiting an official copy of the court verdict.

The firm has also provided extensive and sophisticated advice to Diageo on the tension between trademark rights and advertising restrictions relating to promotion of alcoholic beverages in Thailand. Included among this advice were numerous real world examples of the types of adverting that is acceptable under the law in Thailand. This advice allowed Diageo to develop effective advertising campaigns for its products, says Greif.

Perfetti Van Melle, the owner of the well-known Chupa Chups brand of lollipops, sued European Food for the latter’s use of the trademark Joopy Joops (also in respect of lollipops) and a packaging design that the former considered too similar to its packaging design in the Intellectual Property and International Trade Court. The court decided in favour of European Food, saying that Joopy Joops was not similar to Chupa Chups enough to confuse the consumers and dismissing the lawsuit. Perfetti Van Melle appealed to the Supreme Court (the court of last resort) and the Supreme Court reversed the IP & IT Court’s decision. The Supreme Court said in its decision that Joopy Joops, contrary to what the IP & IT Court said, was similar to Chupa Chups enough to confuse small children who were the main group of consumers of lollipops. This is one of the few trademark imitation cases to ever be decided by the Supreme Court. Perfetti Van Melle was represented by Domnern Somgiat & Boonma.

LawPlus has advised Thai specialty drinks maker Osotspa Co and Shark AG of Austria in defending against actions by two global drinks companies, says Kowit Somwaiya, managing partner at the firm. The actions have reached from Australia to Europe and have become global disputes.

Vietnam

Vietnam has made a number of amendments to the Intellectual Property Law 2005, with a number of critical changes relating to trademark rights, says Do Quang Hung, a partner and patent and trademark attorney at Vision & Associates in Hanoi. “At the first glance, the time limits for substantive examination for trademark applications have been prolonged from six months as provided for in the old IP law to nine months, from the date of publication,” says Hung. “Further, the amended IP law also removes the ‘cease and desist’ letter requirement prior to requesting an administrative action against trademark infringement.”

Trademark Prosecution

Tier 1

Baker & McKenzie

Hogan Lovells

Invenco

Pham & Associates

Vision & Associates

Tier 2

Gintasset Intellectual Property Law Firm

InvestConsult Group

Le & Le

Rouse

Tilleke & Gibbins

Trademark Contentious

Tier 1

Baker & McKenzie

Hogan Lovells

Pham & Associates

Tilleke & Gibbins

Vision & Associates

Tier 2

D&N International

Invenco

Le & Le

Rouse

Winco Vietnam

Tran Dung Tien, an IP attorney at Pham & Associates in Hanoi, says that under the amendments, administrative actions are currently available only if the infringing act causes loss to consumers or society, or the infringer has not ceased the infringement after a warning. “The scope of acts liable for administrative sanction will be extended to include acts that cause loss to the IP owner (Article 211),” says Tran. “Accordingly, it seems that a warning letter will no longer be a pre-condition for taking administrative action in relation to these infringements.”

Hung also says that according to the amended Criminal Code 2009, which came into effect in January 2010, the elements contributing to crimes in trademark infringement such as “causing serious consequences or have already been administratively sanctioned or sentenced for such offenses, not yet entitled to criminal record remission but continue to commit them” have been replaced by “intentionally” and “on a commercial scale.”

The Minister of Science and Technology is now drafting a circular to amend and supplement Circular No. 01/2007/ TT-BKHCN dated February 14, 2007, on industrial property assessment. The circular is expected to be enacted in 2011, says Hung.

Tran says that although counterfeiting and piracy remain a significant problem in Vietnam, the situation is getting better as some amendments to IP laws have been made for more effective enforcement. Contributing to this, on July 1, 2011, the consumer protection law officially took effect. “Authorities should do well to control the market to prevent speculation and smuggling, trade fraud, manufacturing and trading in counterfeit goods,” he says.

Hung says that though Vietnam has been working to bring trademark protection up to international standards, there are still shortcomings facing trademark owners.

“The huge backlog at the National Office of Intellectual Property (NOIP) in their examination of applications has been causing delay in the prosecution of trademark protection in Vietnam,” he says. “The holdup is even greater in the case of appeals. It usually takes around three to five years or more for a trademark applicant to obtain the NOIP’s final decision on whether a mark is accepted or not if the application is subject to appeal procedures.”

Lawyers at Tilleke & Gibbins in Hanoi note that generally, there is a lack of criminal penalties and a lack of experienced judges in the IP sector. Some clients are reluctant to take action due to the unpredictability of the court system and potential drawn-out actions, the firm says.

Key Cases

“Yahoo” is a well-known mark of Yahoo! Inc which has been extensively used and registered in Vietnam since 1997. When it came to the attention of the company that a company named “Doanh nghiep Tu nhan YAHOOOOO!!!” has been registered in Vietnam since 2008, Yahoo! lodged a request with the Business Registrar of Planning and Investment Department of Long An Province to change the infringing company name “YAHOOOOO!!!” On October 18, 2010, the Business Registrar issued a Notification to the infringer requesting them to change the name “YAHOOOOOO!!!” In light of this Notification, in addition to proceeding with the procedure of changing a company name at the Business Registrar, Yahoo! also requested the infringer to voluntarily remove all infringing signs from their signboard as well as other business facilities of Doanh nghiep Tu nhan YAHOOOOO!!! Vision & Associates advised Yahoo!

Even though both the Law on Enterprise and the Intellectual Property Law prohibited the registration of a company name which conflicts with the prior registered trademarks, there was no available mechanism to handle the case, says Hung. “In actual fact, it was impossible to enforce a company name which infringes a prior registered trademark. The Yahoo vs. Yahooooo!!! Case, therefore, is marked as a significant development in the enforcement of trademark rights in Vietnam.”

Tilleke & Gibbins successfully represented leading electronics and appliance producer Panasonic against Vietnamese companies that unscrupulously attempted to register the trademarks PairSONIC, PASSONNIC, and PASSIONIC. Pursuant to the legal arguments submitted by the firm, the NOIP refused to register the infringing trademarks.

In these cases, the firm successfully proved the widespread usage and worldwide well-known status of its client’s PANASONIC trademark. The firm was also able to successfully argue that although there were some minor phonetic and visual differences in the infringing trademarks, they were all indeed confusingly similar to the client’s trademark PANASONIC.

A leading producer and exporter of Russian vodka detected that a large amount of Russian vodka bearing its trademark was imported and sold in Vietnam. These fake Russian vodkas have directly caused a serious decrease in the business operations of the vodka producer.

Having conducted investigations, the company discovered that most of the fake Russian vodkas were imported into Vietnam by a company located in Hanoi. On December 2, 2010, the Anti-Smuggling Investigation Department of Vietnam Customs Office, coordinating with North Hanoi Customs Sub-department of the Hanoi Customs Department, detected a 20-foot container carrying 14,400 750ml bottles of vodka with the Russian producer’s trademark. Accordingly, the North Hanoi Customs Sub-department issued a decision on the temporary suspension of the container. This is one of the biggest counterfeiting cases in the foodstuff industry in Vietnam, with a value of US$13,000. The fake vodka does not only cause serious damages to the Russian vodka producer’s business in Vietnam, but also adversely affects customers’ health. It may be the first case that faces criminal penalties since the revision of Vietnam IP laws became effective in early 2010. The Russian vodka producer was advised by Vision & Associates.

Pham & Associates, on behalf of Seiko Advance Ltd, filed a petition to partially cancel the registration for the trademark Seiko in respect of the goods in Class 02 in the name of Seiko Holdings Corporation. As the ground for cancellation, the petitioner submitted a market survey result conducted by a relevant competent authority of Vietnam showing that the trademark Seiko has not been used in Vietnam by the registrant or its registered licensee in respect of the goods in Class 02 for consecutive period of five years following registration.

The trademark owner denied the allegation of the petitioner by submitting to the NOIP the evidence of use of the mark in the required period of time.

Vietnam trademark law does not regulate the specific issue of fulfillment of the use requirement of a trademark in respect of a certain goods, says Pham. Article 124. 5 (e) of IP Law of Vietnam provides that “advertising for sale of goods bearing the protected mark” is the use of a trademark.

In this connection, when assessing whether an advertisement of goods constitutes a genuine use of a trademark, one should consider whether there is a real commercial exploitation of the mark. In other words, whether potential consumers can purchase the goods bearing the registered trademark based on information on the advertisement. These questions have to be answered on a case-by-case basis.

In this case, the registrant submitted to the NOIP a cutting of an advertisement on newspaper informing the public that the Seiko trademark is being protected in Vietnam in respect of the specified goods and services, the contact information for any future purchasing is contained therein. The registrant reasoned that such use is the use of its trademark.

In a counter response, Pham & Associates asked the NOIP to reject the evidences submitted by the registrant with the argument that there is no real commercial exploitation of the mark in this case. Consumers cannot buy the goods bearing the mark because there is no goods bearing the mark offered for sales on the website as indicated in the advertisement. This advertisement is deceptive, aims at avoiding non-use cancellation action initiated by a third party. The case is still pending consideration by the NOIP.

“Advertisement for sale while the goods are only available abroad is considered a solution to avoiding non use cancellation action initiated by a third-party that many undertakings are chosen to use,” says Pham. “However, deceptive advertisement as such the above is not acceptable. This raises a matter that a more specific and clear guideline on the fulfilment of the acts of use as provided in Article 124.5 of the IP Law of Vietnam should be provided as soon as possible. This will help to prevent deceptive advertisement as well as protect the legitimate benefits of a third party in registration and use of a trademark in Vietnam.”